Study Guide
PART 1 – Introduction
1) Prometric Patent Bar Exam
PART 2 – MPEP 2100
2) 35 USC 101
3) 35 USC 102 (a),(b),(c),(d),(e),(f) and (g)
4) 35 USC 103
5) 35 USC 112 (1st, 2nd and 6th paragraphs)
6) Patentable Subject Matter (MPEP 2100)
PART 3 – Other Patents
7) Design Patents (MPEP 1500)
8) Plant Patents (MPEP 1600)
9) Biotechnology (MPEP 2400)
PART 4 – Applications
10) Examination (MPEP 700)
11) Parts, Form, and Content (MPEP 600)
12) Type and Status (MPEP 200)
PART 5 – Everything Else
13) Secrecy, Access, National Security & Foreign Filing (MPEP 100)
14) Ownership and Assignment (MPEP 300)
15) Representative of Inventor or Owner (MPEP 400)
16) Receipt and Handling of Mail and Papers (MPEP 500)
17) Restriction and Double Patenting (MPEP 800)
18) Classification and Search (MPEP 900)
19) Matters Decided by PTO Officials – Petitions (MPEP 1000)
20) SIR (MPEP 1100)
21) Appeal (MPEP 1200)
22) Allowance and Issue (MPEP 1300)
23) Correction of Patents (MPEP 1400)
24) Document Disclosure Program (MPEP 1700)
25) PCT (MPEP 1800)
26) Protests (MPEP 1900)
27) Duty of Disclosure (MPEP 2000)
28) Citation of Prior Art and Ex Parte Reexam (MPEP 2200)
29) Interferences (MPEP 2300)
30) Maintenance Fees (MPEP 2500)
31) Reexam (Inter Parte) (MPEP 2600)
32) Patent Terms and Extensions (MPEP 2700)
{ 936 comments… read them below or add one }
Hello,
I have been reviewing this website for a couple weeks and have learned a lot. What happened to the rest of the modules? It looks as though this project was never completed. Do you have any further modules which you have not published that I might use for patent bar review?
Do you know of any other sites – besides the links you’ve listed here – that I can use to review?
I greatly appreciate your site and have benefitted greatly from your work. I hope it will continue. Have you considered posting “ads by google” on the site to generate income from the traffic to your site? I hope to hear from you soon and look forward to seeing any additional materials or websites you can recommend. Thank you!
Mark.
Question via email –
What is the difference between MPEP 2100 and 700?
As a broad generalization, MPEP 700 deals more with hard rules and procedures (e.g., a publication with this priority chain is 102(e) art as of this date), whereas MPEP 2100 deals more with standards that are applied when determining patentability (e.g., what makes a particular invention “obvious”).
Just a quick note to say thank you for a wonderful and informative site, which I found yesterday. I am busy preparing for the Patent Bar at this moment and the info on your site is very helpful with the study – goodness knows that this stuff is tedious to say the least.
Thanks again – the site is much appreciated.
I am sorry that I did not come across this site earlier.
A fantastic resource for someone, like myself, who is studying for the patent bar.
Activity seems to have stopped on December 2007?
Dan
Thanks Dan,
I have been really busy and studying for the patent bar was pushed further down “the list” the past several months. I plan on resuming my studies and the site next week.
I took the exam yesterday and passed. I’d say a fair 25%-33% of the questions were straight from previous tests that I had seen while taking the PRG ExamWare tests. The following questions were on mine:
1. The mirror question. The question is which of the following subject to a rejection under 112? The answer choices were, (i) while the spec discloses only a mirror, you can replace “mirror” in a claim with a “reflective material” since the reflective nature is inherent; (ii) you can replace mirror in the spec with the dictionary definition; and some others… I think that the answer is the first one since reflective material is probably not enabled by picking a single reflective material.
2. I had a weird question about which of three things could a copy of a signature be used: amendment under 1.111, authorization to charge a credit card, or an oath or dec.
3. I had the claiming priority to french phone design patent.
4. The hairgel question (with Buzz, not einstein). This question asked about product brochure of a competitor and asked which was the best way to present the new material. Inter partes reexam would be a good choice, but for the date (too early). There was other citation of prior art and ex parte reexam answers.
5. I had a question about which rejection would be appropriate with the prior art disclosed 35.1% and the patent had the range of 20-35%. There were answers: 102, 102 and a preliminary 103, and 103.
6. I had the Bloc question about “pain alleviation” and the “cure for cancer”
7. There were quite a few questions about practice after final rejection (2-3), but I can’t recall any of them.
8. I had a question about when a declaration (?) will be treated as an amendment.
9. I had the question about an RCE without a fee before an appeals decision.
10. I had a several PCT questions… like 6 maybe. I think I had two questions about Japan.
11. There were at least two 102(e) questions including a question about the effective date for a non-provisional originating as an international application claiming priority to a US provisional.
12. There was the question that included the answer that the published, unexamined German pieces of paper are not 102(d) art.
A couple of other points about the exam:
1. I basically did not take much of a lunch. I stepped out, ate a sandwich, and went back in.
2. The search function is frustrating. During practice, I would jump to the section and then start searching from there. You can’t do that in the real exam. It starts from the beginning of the chapter. I was unable to get it to do anything else.
a. There is a “find again” button but if you’re in a long chapter and it doesn’t find your search phrase, there’s no way to cancel the searching. You have to wait until it scans through all 350 pages. If you click the “leave search box open” you can avoid this issue.
b. It’s slow. It takes a good few seconds even to find search terms on the same page because of how the “find next” works.
c. The one nice thing: it automatically returns you to the same place in the MPEP if you click “done” on the MPEP to return to the answer screen and then want to go back to the MPEP.
d. There’s no way to have to sections open at the same time. So if you want to run to the rules, you’ll lose your position in the other chapter.
3. While taking the PRG tests I was finishing 50 questions with about an hour to spare. On the real test I was finishing with about 25-30 minutes to spare. I blame this mostly on the search incapabilities.
4. The marked question procedure actually works pretty well. If you mark a question, once you get to the end you can review JUST the marked questions. If you plan on doing this, I suggest that 1) you pick an answer anyway, 2) write down quick notes about the search that you already performed.
5. BE VERY CAREFUL ABOUT ACCIDENTALLY CLICKING. It’s very easy to select (or unselect) an answer when setting focus on the answer screen. Reclicking on an answer will UNSELECT that answer even though no other answer is selected.
6. My first half was considerably harder than my second half. A friend who took it at the same time as me reported just the opposite.
7. The exam is really not that tough.
Best of luck!
other ones that were on the exam: lip gloss as gag gift and Laurel & Hardy:
14.
On August 7, 1997, practitioner Costello filed a patent application identifying Laurel,
Abbot, and Hardy as inventors. Each named inventor assigned his patent rights to Burns just
prior to the application being filed. Laurel and Abbot, alone, jointly invented the subject matter
of independent claim 1 in the application. Hardy contributed to inventing the subject matter of
claim 2. Claim 2 properly depends upon claim 1. The examiner rejected claim 1 and claim 2
under 35 U.S.C. § 102(a) as anticipated by a journal article by Allen, dated July 9, 1997. Laurel,
Abbot, and Hardy are readily available to provide evidence in support of and sign an antedating
affidavit under 37 C.F.R. § 1.131 showing reduction to practice of the subject matter of claims 1
and 2 prior to July 9, 1997. Which of the following may properly make an affidavit under 37
C.F.R. § 1.131 to overcome the rejection of claims 1 and 2.?
(A) Laurel and Abbot.
(B) Laurel, Abbot, and Hardy.
(C) Laurel, Hardy and Burns.
(D) Burns only.
(E) None of the above.
The claim counting question was also on there where the answer is 147.
does anyone know which revision of the mpep that the current patent registration exam test is based on?
Rev. 4 (started being covered by exam in 10/06…)
Quick question for anyone who has already taken the computerized exam. Can anyone give a guess of how many of the “repeat questions” you saw on the exam. It is like 1 or 2, 10-15, 30-40, etc?
Thanks,
Mike
Mike-
Word on the street is the number varies, anywhere between 15 and 25-30ish.
Check out discussion at intelproplaw(look at the most recent last page of the forum posting with Subject “New Patent Bar Online Exam – Prometric”)
Mike,
I took it on 7/5/08 and about 25-30 questions were from the repeated questions/old exam questions. I studied April and October 2003 exams extensively.
Hey all,
Like i said before on the old test section of this website, nothing beats studying for this test than taking old exams and then analyzing why you got the answer wrong or right. helps if you have a spreadsheet to track it. i think that over 70% of the exam is repeat concept testing (you will see the same cite i.e. 608.01n etc repeated over and over).
my advice is start with the 2003 exam and work your way back to 1998 unitl you can score 95 – 100 % on those exams by taking them over and over again.
best of luck
Neil
Since the current Patent Bar exam is so random and tricky in the selection questions, this site has the best approach in helping us to prepare the exams especially the report on the latest test questions.
Thanks for the informative site and appreciate all the effort.
Hi,
this is a great site and i thank you for it. sometimes, however, i am not able to access it. it requires a login and password and even then it says this is a protected blog. can you send me the login and password so i can enter it later on. send it to my email
thanks so much
sana
Does anyone know the answer to the Laurel, Abbot, and Hardy question?
Any current update for the TEST ?
I just passed the Patent Bar. Great website and thanks! The best way to pass is to know how to quickly search through the mpep, and UNDERSTAND the old test questions (Dont memorize them because they vary many repeat questions). Know when you should search the actual MPEP or 37 CFR (the patent rules). You save a lot of time by looking through 37 CFR rather than the MPEP.
Just took the test and failed, unfortunately. Lots more questions about appeals and PCT, almost nothing on claims. I wish I had found this site sooner; PRG was very detailed, but didn’t build a bridge to referencing the MPEP. I’ll try again ASAP.
Took the test yesterday and failed by 9 points. My first part of test didn’t have any repeats. I felt like questions were really confusing. Lots of questions on 103, 102 e, certificate of corrections, quite a few on PCT.
Second Part of exam- probably about 10 repeaats
Japan-45 days
Moondust
Tribell
Japan 45 days
American resident but Japanese National filiing a PCT application in US in Japanese Language-forward to IB w/ a free equal to transmittal fee
few questions 2 months from final office action and advisory action is sent within the three months-extension of fee payment starts from?
advisory action is sent after three months -extension of time starts from?
Who can sign the terminal disclaimer?
A question: Your patent gets 102 b bar over another Patent X, same composition but Patent X is for polishing shoes and ur caliming for growing hair. wut do you do a)nothing b) aruge different use c)argue process claim d) and e) i don’t remember. I picked “c”
counting dependent claims
a lot of 102e questions
appeal questions-few were repeats
Laminate questions-variant
Rexamination certificate is open to public
102(g) questions
a lot of PCT questions
I was scoring 95 on past 2003 and 2002 questions. I think if i had a few repeat questions on the first one, I wud have passed. It just sucks to take it again. Also, know how to search on the exam. I didn’t have to search everything on the first part. I would read 700 and 2100 very carefully. Master in 102 e and PCT and appeals.
This cite is very very helpful to pass the test. I was really surprised I didn’t pass.
Just passed today; wasn’t that hard but I was well prepared. I took PLI and it was very helpful to understand the basics. This site is very useful but I think it will be a big mistake to just rely on past questions. Sure, there were about 10 repeat questions but they do come with some variations and memorizing answers won’t help. Make sure you get around 70% correct in first attempt while trying old exams. That will show how much gas you got. Eventually you will make it to >90% after couple of attempts. Some of the repeat questions:
Japan-45 days
Tribell
American resident but Japanese National filiing a PCT application in Japanese. I think its tricky and the application shouldn’t be sent to IB since its American resident.
Costa Rica citizens filing PCT in USPTO, will be sent to IB preserving filing date.
Laminate questions
Rexamination certificate is open to public.
Remember broadening dependent claim in reissue application without affecting independent claim is not broadening reissue.
1.56 fraud where inventor assigne confess after third party protest that inventor concealed a publication from attorney.
At least 3 oath and declaration questions, 3 restrictions questions,
Mirror question
A) because the definition of mirror automatically includes its reflective qualities, there is no need to amend the specification to include the reflective qualities (E) the mirror in one part of the specification is “parallel,” and the mirror in another part is “perpendicular,” the specification is conflicting and one who has knowledge in the art would not be able to tell the difference so you amend the specification (answer).
PCT post 11/29/00 102e question
Applicant filing national application claiming priority from PCT application (filed before 11/29/00) that claims priority from US provisional. What will be 102e. The answer is filing date of US filing Remember, pre 11/29/00 PCT application has no calculated 102e (unlike PCT origin US patent.
Best mode question.
Spanish phone question (102d/172, cip)
Appeal: New ground of rejection
Small entity, filing assignment fee is not reduced.
Documents an Assignee Not of Record can sign
One question was, what things can an assignee sign, if he has never properly recorded his ownership?
MPEP 324 VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED
Filing small entity status
Means-Function Claim language question; factors examiner consider to make rejections
What happens both inventors die after notice of allowance, no assignment
One question what form examiner uses for reference citation
Small Entity’s Filing Fee – Refund
Applicant accidentally paid large entity filing fee even though entitled to small entity status. Can he get a refund and how long does he have to apply? Remember 3 month time to file refund can’t be extended.
Multiplicity
Multiplicity question – applicant has one utility claim and more than 900 claims covering small ornamental differences. Answer is that the examiner should call the applicant and have him select a few claims for examination.
Maintenance Fee payment not accepted, how to file petition
Divisional Reissue
A patent containing claims 1-10 has issued. The subject matter of claims 1-5 was invented by inventor A, who has assigned his rights to your client, company C. The subject matter of claims 6-10 was invented by inventor B, who refuses to cooperate with company C unless he is the sole named inventor of his own patent. Company C wishes to divide the claims such that one patent contains only claims 1-5 and has inventor A as the sole inventor, and another patent contains claims 6-10 and has inventor B as the sole inventor. How should you advise your client?
A Claim claiming several compositions is anticipated by prior art claiming single composition in range.
A lack of utility rejection; claiming cancer cure but credible utility for alleviating pain can avoid rejection.
Good Luck!
I passed the exam today (01-03-2009). It wasn’t easy by any means, but it is doable if you’ve put in the time to study. There were several repeat questions, probably around 15-20. A lot of the repeats were from PLI’s practice questions as well as old exams. There were about 5 questions pertaining to appeals, 5 pertaining to obviousness, and about 5-7 dealing with PCT. I’ll look over this site to see which repeats seem familiar and if I can find any repeats in my study materials. A few that I can remember right now are the DRAM question, Lip Gloss, and the questions about decisions of the Courts binding on the PTO. There was also a question about Protest and Maintenance fees. 102 showed up quiet a few times and enablement and best mode at least factored into a question two times each.
For the American resident but Japanese national question posed by SandyBoss, can anyone clairfy this issue? I know that since he/she is an American resident, it should be filed with the USPTO, but since it is also in Japanese…should it be forwarded to the IB?
@ Cheesepep
That’s correct. That question was on my exam and it will still be accorded the filing date that it was filed at the PTO, the only thing is that it will be forwarded to the IB and the IB will act as the receiving office.
took it a couple of days ago…
2 variations on 3 months OA, response filed within 2 months (and 1 question response filed after 2 months), then advisory action. When is the due date for extensions calculated from?
Japan 45 days
1214.01
MPEP 324 Section 7
Australia 30 months PCT
102(e) date calculations…use 706.02f flowchart…was variation on one of the questions posted here about continuation of an international app filed before Nov 29, 2000 (and not after as posted here)
Small entity status…claimed large status…I forgot details…how can he claim refund…answer was he cannot claim refund
Design, 6 months to file priority
Variation on laminate question (direct opposite)…tricky because 2 answers were similar…one said comprising, one said consisting
1.56 fraud
Shoe polish, hair gel question. I choose that he should patent the invention using the product or something.
American national, Japanese resident, app filed in Japanese…app will be forwarded to IB with fee equal to the transmittal fee
Pain alleviation and cure for cancer
Change of ownership…several questions….one question was 2 inventors. I did not want the other one to be listed. What to do? answers were (1) do nothing 2) file protest 3) file 1.48 4) wait for patent to issue, then 1.324 when all inventors were not in agreement…5) file petition after patent issued (I choose this)
MPEP 2286…court cases binding
in a reexamination and in response to a first office action, an extension of time may be granted for sufficient cause and a reasonable amount of time
1.377 maintenance fee
Some fax questions
when is an examiner likely to consider an amendment after an appeal? ans- two months from the date of the supplemental examiner’s answer
notice of appeal does not require a signature
copy of signature may be used with authorization to charge a charge/deposit account 502.02
what’s required to make sure assignee is printed on divisional patent (make sure name is on issue fee transmittal form, answer (e)
112 6th paragraph…”means for” “step of” with reference to the specification
Lost mail and due dates
Calculating the number of DEPENDENT claims…6 claims all dependent on sole independent claim 1. 2 depends on 1. 3 depends on 2. 4 depends on 2-3. 5 depends on 3. 6 depends on 3-5.
Multiple dependent claim question
Overcoming 102(b) question
Gum adhesion in supermarket
Change in drawing submitted within 30 days of PCT app…same filing date?
What is required for a filing date in a reissue app? filing fee?
Contents of a reissue app?
Who can file a reissue app? (lots of reissue app questions)
Something about someone wants to provoke an interference
Conversion of a nonprovisional to a provisional app…what is required?
Drawing 5 gets lost in the mail. What can you present to preserve initial filing date? answers were (1) submit USPTO filing postcard saying drawings 1-5 included and (2) submit express mail showing evidence of all 5 figures saying “5 figures” (I think this is the right answer but I didnt choose it)
something about filing an app in a NAFTA or a US country
know who can sign a reissue app, and various other documents
product by process question
some question about 1.131 in a reissue app? 1.132 only refers to reexams right?
Henrietta camera question
Spend time on 100 200 300 and the lesser chapters
Just passed the exam yesterday after 2nd try =P
Failed the first time with a 68% and about 50 hours of study (pretty much just took the PLI home study course). I think I studied another 100 hours to make sure I didn’t fail again (mostly went over the old exams). By the way, I also work in the field. I can’t imagine being able to pass this test without working in the field, but I’m sure somebody’s done it =P
Either way, there were tons of repeat questions from all the old exams…roughly 25-30. The ones that come to mind, and are not surprises:
Japan/45 days
Compound Y
DRAM
Laurel and Hardy
Buzzcut’s Hairgel
There were a whole bunch of appeal questions. 5-6 PCT questions, 2 protest. There were a surprising amount of duty of disclosure and access questions, I think about 5-6.
For those of you studying for the exam now, I recommend (like everyone else) study, study, study ALL the old exams. Know them cold. While you’re reviewing your answers be sure to read the relevant portions of the MPEP/law/rules so you really understand the answers.
By the way, don’t get discouraged with the old exams. The old exams can be more frustrating than the actual exam because many of the old questions are poorly written/unclear and, many times, the old questions are directed toward laws and rules that have since changed. None the less, the old exams are by far the best study tool.
Good luck everybody!
Don’t worry about failing the first time because most people do. Review your old test and take it again.
I took the test today and passed.
Easier than I thought and I am sure that I made 85+.
There are around 10+ regarding to the PCT 1800, which is sort of easy if you remember the index(you will have plenty time to search the MPEP, no rush).
Repeated questions are around 15-20. I didnt count because there is always variants and USPTO tends to switch some of choice or add some new irrelevant answers to trick those who only remembers answer but not underlying rationales.
It will be really really helpful if you DO read MPEP but if you only read outline here and remember where to search for answers, you will be very very fine.
Again, no rush during the test, you have 3 hours to crack it down. In my case, I finished each session within 2 hours.
Finally, I am really thankful that I found out this website 2 wks ago and it really helped a lot.
Passed the Patent bar today, Thank you Jesus! I really thought the test was really straight forward. I had to have seen at least 50 repeats between the old test and the reported new questions. In addition, another 5 or 6 were pretty easy common sense. PCT for US receiving Office not applicants but gets US filing date two 102(e)questions. Mirror question, Tribell reissue, VELCRO.
Checking.
Hi there,
I am preparing for the patent bar. I’ve been studying for 6 months now. I am readying from several sources, but I don’t know what to expect on the exam. Do you know what type of files are provided during the exams? Is the MPEP and 37 CFR available only? Can you search the whole file, or is one chapter at a time? Can you browse the content by selecting a link on the side like in the PDF files?
Any details would be appreciated…
>>Dan
I used Patentbar.com material, and the MPEP provided was pretty much identical using Acrobat 5.1 i think. Just the search function was little slow I think since I use pretty high end PC.
I would suggest more of getting used to pretty much big text. My monitor at home is 26in with 1920×1200 resolution. It seems like the test was administered in 800×600 or something like that. The text on the test were HUGE and the monitor was little blurry (not at optimum resolution). Same with the MPEP, it was little blurry.
Don’t get worried about whether having problem with using the MPEP. If you can use the computer and internet to a point of finding this website(assuming you started at google or other sites like intelproplaw.com etc…) you will have absolutely NO PROBLEM getting used to it in 10-15seconds.
Good luck on the test, and like others said make sure to know the problems of 2002-2003(pretty much memorized), and the other problems (past exam, and reported exmas on here) down cold. With out that, I would never have passed the first try.Just don’t give up studying. More time you spent, the higher the pass rate for sure.
Hi,
Can anyone tell me the correct answer for the museum titanium baseball question?
Sam,
answer to your question really depends on what you are asking here. public use or prior art? for details, please check exam questions and concept in this website. you will find it very helpful.
Just passed the patent bar (probably 1hr ago) on my first try and wanted to do my part to contribute. I had no previous exposure to patents. I used PLI materials and this site
1) Went through all PLI lectures and assoicated practice questions
2) Reviewed tests from 2003-2002 (x3)
3) Reviews new and repeated questions from this site and the wiki (http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent_Bar_Exam)(x2)
4) I had about 10 repeats – If you follow the methods above you should do fine.
5) Now I’m off to law school :).
I’m going to be taking the test a week from today. A couple questions 1. How similar is the exam taken in the same month? (same questions just rearranged? or is it an entirely different test every day) and 2. PLI guy, which were the 10 repeats you saw?
I just took the exam today and passed.
I saw a lot repeat questions from this site. I used the lecture video tapes (2004 Barbri with lecture notes), new MPEP from PTO website and old exam questions.
Know the questions on this site well. They will help you a lot!!!!
Hi Just passed today, can you please advise which new questions you saw..i.e. questions not posted on this site? Thank you. I’d highly appreciate it
Sam,
Below are the questions from this site which I saw on the test. Some were variations and not exactly the same. Hope this helps.
——————————–
Parking Meter (10.03.28p)
Moondust (10.03.6p)
Five Steps to Cross a Road (10.03.23a)
Door Handle (10.03.24a)
Tribell (10.03.16a)
35 USC 102(d) (10.03.8a) variation
147 Claim Counting (10.03.50a/4.03.28p)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Lancer Toothbrush (4.03.33a)
Board Decisions (4.03.37a)
Japan/nonpublication request/45 days (10.03.44a/4.03.2a)
Third Party Submissions (10.02.46a)
Facsimile Transmissions (10.02.49a)
Hair Gel (4.02.37p)
Mr. Brick (4.02.24a)
37 CFR 1.8 and 1.10 (4.02.16a)
35 USC 102(e) (4.02.11a)
35 USC 103, 102(f) and 102 (g) (10.01.26a)
Obviousness (10.01.30a)
35 USC 101 (10.01.6a)
Prior Art (10.00.16a)
102 (f) (4.00.44p)
102(b) dates (4.00.41p)
Reexamination (4.00.47a)
Prior Art (4.00.42a)
Bond 60%C or 60%D (4.00.27a)
Obviousness (4.00.32a)
Tommie and Jo(4.00.23a/4.00.24a)
I just passed the exam a few hours ago. Aside from having most of the questions that “just passed today” noted, I wanted to touch on a few topics I wish I went over more.
Death of an inventor! There was absurdly about 3 questions on this. Inventor assigns invention then dies, what happens? multiple death situations pick which is correct. One more that I forgot. Just make sure you know in fairly good detail what happens, or exactly where to look, I ended up blowing all kinds of time on those questions.
There was one question on 112 sixth paragraph limitations and usage as prior art, I didn’t understand the question remotely and must have spent 15-17 minutes looking for an answer in the MPEP for JUST that question, and ended up not finding a definitive one (memorizing answers to 03′ tests gave me time to do that).
There were less questions on chapter 7 than I was expecting and more from 21 (probably 30-40 from just chp21, including repeats).
there were roughly 3 questions from chapter 19:Protests. I wished I had been more familiar with that. Basically asking when they are OK to make, and do you have to identify yourself when making one, and what parts are required.
People on this blog have mentioned how many PCT questions there are and I figured it would just be more of what was on the practice tests, but they were more complicated fact patterns than I had expected. There was one on correcting a flub in claiming priority dates where the practitioner had listed a provisional app # and a filing date but flipped the date/month so it said April 1st instead of January 4th, how long do you have to correct that? I couldn’t find anything in the MPEP but there was only one answer using the date of the 4th so I guessed that one. There was also a few that threw a whole slew of dates at you most of which being useless, which became kind of overwhelming.
There were a few questions who’s fact patterns I cannot remember that crossed some of the big chapters, for example a PCT application that asked how should you advise client and the options included an appeal route or a reissue route.
I also saw the Jon/John Jones question Oct03’pm #18… except they removed the correct answer and replaced it with “file an ADS”. I’m thinking that was the correct answer. I must have stared at that one for 5 minutes wondering why they took out the answer I memorized.
I honestly went into my lunch break thinking it was hopeless and there was no way I was gonna pass unless I didn’t miss a single one in the afternoon. They must have piled all the beta questions into the morning. The prep I did for this test was study like it was my full time job for 2 weeks, using essentially only this website and the MPEP. Basically If you memorize all 4, 03′ tests (and memorize why the answers are what they are) you’re halfway there (livin’ on a prayer). The other half is memorizing where things are in the MPEP and getting the general gist of everything else on this website. If anyone has any direct questions about what I saw specifically I’d love to help this blog in any way possible due to how much it helped me, so feel free to email at colinfowler@mindspring.com with pointed questions.
Alright, time to celebrate and drink ridiculous amounts of green St. Patties beer.
Hey Colin,
Congrats on the passing the exam.. I’m taking it in 2 days, so it is nail bitting time.
questions: What do you mean with chapter 7 and 21?? is that MPEP 700 and 2100 or 7 and 21 as enumerated in the top of the page (ie: 7 design and 21 Appeal)??
on the PCT (Jan 4th) are you sure the question was when can it be fixed or related to petition and payment of a fee??
I passed today. Glad it’s done. Saw many of the same repeats that others have reported over the last few days. Here’s a quick list:
Spanish phone (CIP variant)
Mirror
Jon/John
Costa Rica PCT
German PCT
Swedish PCT
Tribell
Lancer toothbrush
Synthetic Z
Japan non-publication request
Electric Fan
Broom (multiplicity)
4 factors of means plus function
Investigating deceptive intent
Piecemeal examination
What a non-recorded assignee can sign
Best mode
PTO-892
I also saw several (4-6) restriction questions.
As far as preparation, I attended PLI’s live course, practiced the 02-03 exams (multiple times), and reviewed the questions on this site and patentbarquestions.com a couple times.
Regarding Colin: “There was one on correcting a flub in claiming priority dates where the practitioner had listed a provisional app # and a filing date but flipped the date/month so it said April 1st instead of January 4th, how long do you have to correct that?”
See PCT Rule 26bis.1 “Correction or Addition of Priority Claim.” You have either 16 months from the incorrect priority date or 16 months from the corrected priority date, whichever expires first, but correction must be submitted withing 4 months of international filing date.
I am just starting to study for the Bar. I have a question how to go through this guide – should I start by the chapters/parts or via the categories listed on the left side of this website? What is the best way to achieve most information and also continuity? Thank you in advance.
This post is for the webmaster of this site…
I know this is a preparation website for the patentbar, and is full of great resources… but as a suggestion for you, I think it would be helpful for many readers to find details of how to get a patent job.
I found it dificult to get information on how to penetrate the patent agent job market. So, my suggestion would be do add a tab for people who work already in this market, and could make suggestions.
I am an EE, and I also hold an MBA. I find it very difficult to find patent agent jobs. Any suggestions? Should I look/inquire with law firms or with techical companies? Do I need any other skills or job experience to be able to land an electrical patent agent? Or is just because of the recession that these jobs are scarce?
Thx,
Dan
Dan, go to http://www.intelproplaw.com
Just passed today…your patent bar prep method inspires me with confidence since I am also working with old lectures (2004 PRG) and old exam papers.
I had a Q regarding studying the MPEP. How much of it should I be studying? Or should i be practising to look things up on the MPEP rather than learning the MPEP itself. Any advice on this from everyone is much appreciated.
This message is in response to Dan from Mar. 19, 2009. I don’t think the market is scarce at all for EE patent agents, it is just a matter of finding the right way in. And no, you usually don’t need any experience in the legal realm to land a patent agent position. I personally got hired right out of engineering grad school into my law firm, with no long term engineering industry experience. I am currently working as a patent agent in a law firm and we are completely swamped. Not only that, I get contacted by headhunters at least twice a week looking to get me to jump to other law firms. Also, on some of the daily patent law journals out there, I see daily ads for patent agent positions, namely in IP360. I recommend finding out what firms have technical advisor/patent agent positions and contacting them directly and contacting some of the legal placement headhunter organizations. At least from the inside, there seems to be a plentiful amount of work and positions to go around. Hope this helps! Good luck!
Hello,
I just began studying for the patent bar this week and don’t really know where to begin, I tried to enroll in the BarBri course but it is not offered in my area until July. I would like to take it sooner.
I have attempted self study based off all the comments I read here. It’s helpful, yet also difficult with a 1 year old.
So I thought I would throw it out just in case…ANYONE THAT RECENTLY PASSED WILLING TO SELL THEIR PLI HOMESTUDY MATERIAL? So far it seems like many of the recent passers have used that material. I can honestly only afford to spend $500. I know it’s worth more, but that’s all I have right now…or I can exchange services (I make wedding invitations…and not the cheap border/printed ones, nice fancy pocketfold ones).
Anyhow…any attempt to make things better for the little one was worth a shot to me =)
Email:mychellejane@hotmail.com
Today I passed my exam, fisrt try.
I hope I can contribute something for this forum. I knew this website 2 months ago, but I really used it two days ago. It helped me a lot. Thanks for the help.
I started my preparation after I get the confirmation mail from USPTO. Before that, I have no clue where to start. I bought a Patent Law textbook and read it. Also read MPEP. These are totally wrong for this exam.
Then I knew there is a PLI, so I bought a second-hand one. The new one is too expensive, and I cannot afford it. PLI is a good start for this exam, but not enough. It can help you understand this exam very quickly. Trust me, I never read 2100, 700, 1800 and 600 from start to the end. These are suggested by John White. I only read PLI courses followed with audio cd for once, then I focused on all the exams, from 1997 to 2003. PLI has one book, I forgot the name. That book explains all the key words in MPEP. That is very good. I read it for more than 3 times.I listened to CDs whenever I have time such as in GYM and drivng my cars. I believe I listened these Cds for more than 3 times. but NO reading.
AT the beginning, when I did exercise, I felt very frustrated because I can only get around 50% accuracy. No matter how hard I try, my accuracy is never more than 72%. I completed a first-round exercise,although I knew my accuracy was so bad.
I continued to do previous exams again and again. Maybe more than 4 times? Finally I can pick up an answer for most of questions without reading the questions themselves. When I read the answers, I can guess what USPTO wants to test. Actually when you exercised more and more, you will feel the questions can be represented by different KEYwords. You can get an answer from the keywords. The question just doesnot matter. USPTO is not good at providing good questions, since they made the wrong answers, and they are so obviously wrong.
Last round I used this website. Around 1 and half days to go over all the questions. 2 Days should be enough.
I like to talk something about the exam itself.
The rules I applied: COMMON SENSE and KEYWORD RULES.
Common sense: for example, when you saw a MUST,ONLY etc, you have to be very careful. Except that I can 100% sure that MUST and ONLY are right, I would not select them.
KEYWORD RULES: when you saw some words that you never saw in all previous exam, just igore them.
There are around 20 repeat questions, all can be found from this forum, so it is unnecessary for me to repeat them one by one. You have PLENTY OF time to check the answer from MPEP. When you are not sure the answer, DON”T GUESS. CHECK MPEP. MPEP can provide answers for 90% of questions. AGAIN, DONOT GUESS and DON”T RUSH. YOU HAVE ENOUGH TIME TO FINISH THE EXAM.
Tons of questions from APPEAL,REISSUE, PCT and 103 obvious.
Some questions never shown in this forum:
PCT has one:I don;t know the questions, but my answer is amend claim only, to IB( I selected the answer without reading questions, haha, KEYWORD rule,:-))
Another PCT:102(e) prior 11/29/2000
PCT to french, to US national stage without executed declaration( I selected abandoned because of no exectued declaration)
PCT in Australia, I selected A, never abandoned( I knew the one in this forum put an abandoned answer for this one.But I checked the applicant met all requirements, so I
one question for cfr 1.42 and cfr 1.47 for which one is wrong. I selected the A. I believe when you read the MPEP.
one questions for restriction for combination, subcombination, you can find the answer from MPEP.
a question talking about restriction requirment
a question talking about best mode requirments( at least I know best mode requirement different from enablement requirement), I selected the one ” the applicant doesn’t need to point out which one is the best mode.
some questions regarding to new grounds of rejections. You will be able to find answers from MPEP.
In my first 50 questions, I marked around 10, but only about 2-3 that I have no clue and I don’t know where I can start. As far as the second 50, I only marked 3. When I finished 86 out of 100, I knew I will pass for sure. So it will be doable for anybody. I am just preparing for it during my spare time. I work as a full-time engineer.
I started it after I received the mail confirmation from USPTO.
AGAIN, the KEY is repeat previous exams until you feel sick with such stupid questions. This willl build up your confidence.
BTW, if your guys don’t mind, I want to sell my PLI second hand courses, including everything. Send me an email: e2981604@hotmail.com for the course. Thanks a lot!
Good luck to everyone!
actually don’t even waster time on previous exam before 2000.
Hi heaven,
Where did you find the second-hand PLI material? Also, would it be possible for me to buy it from you? Your input contributed to building my confidence, CFR by CFR!
Thank you.
Sean
Sean,
You can send me an email firstly to e2981604@hotmail.com.
Best regards,
hi there, just passed last Friday.. second try.. I was ill prepared the first time, I focused on MPEP and the PRG video lessons and only had time to do about 150 questions of the PRG ExamWare. I did not know of this site and the “new reported questions” or the “repeat questions”. I had a 58% that time.
I remember the first test I took back in November was heavy on re-examination, appeal and PCT, something well documented in several forums but that I was unaware of. I also remember the morning exam was extremely difficult compared to the afternoon one.
This time around was different, both am/pm tests were about the same level, I don’t think the test was heavy on any particular subject and I had only about 15 repeat questions (5-6 am and 8-9 pm). I took the Apr/Nov03 tests about 4 times each, I could finish the 100 question of the test in 1:30 hrs usually missing only 1 or 2. I also took the repeats from the previous tests (99-2002) 75 questions total, 4 times. I had the PRG ExamWare software and I did all the PCT, Reissue, reexamination, appeal, restriction and interference questions (about 250 questions) twice. I was scoring on the 90% the week before the test.
Reading this and posts on other sites was very useful to get “new” questions or at least an idea of what a questions was about but I had the feeling at reading at some posts that the exam was easy, you know the: “passed first try, only studied for 2 weeks”, “all I did was to take the 2003 tests 3 times”, etc, etc… I tell you, these people are either not telling the truth or are in the 0.1% of the genius class that do not need to study. the pass rate is 40% that means 6 out of 10 will NOT pass, so study until you think is overkill and then study some more. I had to take it twice and I can tell you it is not something you want to do twice, if you registered to take the test you better make sure you pass it first try and that is only done by studying like there is no tomorrow for I will say at least 2 months. make it 2 hours a day for the first months and then build it up until you can take 200 questions in a day two weeks before the test.
Now to the questions I saw in my test not reported above:
1) I had 3 questions on provisional filing where they try to confuse you with the cover sheet (first time I see something on cover sheets on an exam). One question was what is needed to get a filing date (q1), the other was of the type: what is in accord with USPTO blah, blah except (q2) and the other one was something about a provisional filed without a cover sheet (q3). Just remember: cover sheets are NOT needed to get a filing day (q1) but they ARE needed for a COMPLETE provisional filling (q2 said something like cover sheets are unnecessary for a complete provisional filling) and if the cover sheet is not attached to the provisional application then the application is treated as a non-provisional (q3).
2) I had a tricky variation of Apr/01 AM #38 (not reported in the repeat question list) the question is about a small entity paying for the full filling fee and requesting a refund: 3 answers were easy to cross, something like a) cannot; b) you have 2 years; c) it was not a mistake so you will not get a refund; then there was d) 3 months extendable with 37 CFR 1.136 and e) 3 months no extension. answer is e, but please read the questions in Apr/01 #38AM.
3) I had a clever questions on a guy that filed a non-provisional application without a claim, what can he do to keep the filing date? you had choices like a) nothing b) file a claim via amendment and keep the original f/d c) file a claim via amendment and keep the new f/d; and then d) convert to a provisional and request refund of the excess fees or e) convert to provisional (no mention to refund). the answer is e) but again read the MPEP.
4) who can sign a terminal disclaimer if applicant assigned 40% to corporation A and 40% to corporation B? read the MPEP on assignments but if you are reading this 10 min before the test know that if the application has not assigned 100% of the rights to a single entity then it doesn’t need to cosign or is allowed to sign, therefore only the inventor/applicant can sign.
5) I had question that tries to trick you with fact that certificate of mailing is allowed for OA replies but if you mail a notice of appeal the date accorded is the date it is received by the USPTO, the question was something like: you got a final OA with 3 month SSP on Jan/16 you mailed a reply to the final OA together with a notice of appeal with a certificate of mailing on the 16/april that was received in the USPTO on Monday the 19/April. today is Monday 21/Jul. When, if any, is the appeal brief due w/out extension of time? answers were of the kind: a) application abandoned because reply to OA was late (19/Apr) b) Application abandoned because time to file appeal brief was 16/Jul; c)application is not abandoned but need to pay 1 month extension to file appeal brief; d) you can file appeal brief today without paying extension of time (this is the answer).
6) when is the fee not reduced for small entity: documents affecting the tittle.
7) I had a questions on Protest: the protest was introduced in the USPTO after the application was published but it was served to the applicant before the publication. will the examiner consider the protest or not? I’m not 100% sure of the answer but I think the examiner will not enter the protest.
some tips that proved useful for me:
-many questions will try to confuse you with overcoming a 102 rejection with 103 arguments, for example: there is a 102(e) rejection and 3 of the answers are: argue commercial success or long felt need or extraordinary results. these 103 arguments will never overcome a 102 rejection.
-Remember you can combine references for a 102 rejection if one of the references is used for establishing an inherent characteristic of a reference for example. 102 not always absolutely need to be one reference.
-Remember that to use 1.131 affidavit the reference patent can NOT claim the same claimed invention (if it does, then only way forward is interference if reference patent issued less than 1 year). you will be able to reject some of the answers quickly is you see “reference disclosed and CLAIMED the same invention” then you know you cannot use 1.131 affidavit.
-Be careful, as stated by Heaven, when the question shows ONLY or MUST. most of the times a fee is needed: ie: file ONLY an RCE (will not be correct as an RCE must be filed with the fee).
-I did a table 1-50 and A-E during the tutorial as some suggested and put down marking on it like the answer I selected (saved some time in the AM test when I checked if I had left any questions unanswered and found I had not clicked the answer in 2 questions, always check you click an answer even if your are clueless), answers that I knew were wrong so if I had to check the question again I didn’t waste time rechecking it, I marked the question with a check (99% sure), a circle (80% sure but needed to check something), a question mark (for don’t even know where or what to search in the MPEP) and asterisk (for questions I had narrowed down to 2 answers and I knew where I could get the correct answer quickly, the type of question you do not know if a fee is applicable or not). I wrote key words next to the question number to save time.
-I didn’t bother learning 102(e) PCT reference dates but made sure I understood the diagram in 706.02(f).
-I kept a tally of questions I knew where 99% right, that helped me gauge how was I doing during the test. In the AM section I had 27 check marks and about 6 asterisks with an hour to spare so I didn’t look at the other questions and focused on getting the asterisks to check marks. I did the same in the PM I had 30 check marks and 4 asterisks. 10 minutes after the test ended I had 63 check marks and smile in my face.
good luck. if I remember anything else I will post it.
luis – awesome idea to keep a tally with check marks and asterisks. I took it today, and it kept me settled when I began to panic a bit. I’m not sure I would have passed without it.
I saw a lot of focus on appeal procedure and examiner/appelant/board actions after complete and/or partial upholding of examiners rejections, as well as some examiner actions I hadn’t seen on practice exams as to whether or not they were appealable.
I had no PCT questions in the morning session, but about 5-6 in the afternoon, a lot less than I thought would be there.
There were probably 20 questions from the exam questions tab of this site, so know those.
One piece of advice for everyone – you have time! I was only done with 3 questions 20 minutes in to the afternoon session, so dont freak out. You CAN make up the time. Just get the question right.
Very excited, Just passed about 4 hours ago!
I owe a great deal to this website’s contributions and the great information I found here. Without it, I don’t think I would’ve passed.
I saw about 25 repeat questions (including those published after 2003). Keeping with the advice that’s been given, absolutely know the 2003 exams like the back of your hand.
I had maybe 5-7 PCT questions. And about 10 appeals questions as well on stuff like when you can remand, amendments made, rehearing after new rejection by the Board. Quite a few reissue applications, for instance like how to go about amending a reissue. The afternoon section was slightly easier than the morning session; I was done with about 30 minutes to spare. While I barely finished with the morning section. Actually, I was a bit concerned because in the morning section I didn’t see a single PCT question, so I studied my ass off on PCT issues during the lunch break and it really paid off. There were a couple of questions where I spent maybe a good 10 minutes on, and even then, I had to make an educated guess between two choices.
Repeat questions I saw:
– 52 tables (btw. the key to this question is that each table is about 1/2 page length. so because the entire length of the tables is less than 50 pages long, there’s no way you can submit the tables on CD-ROM. Also know that you need a duplicate copy of the CD)
– lip gloss
-DRAM
– titanium baseball publication
– Potter
– foil airplane 103 rejection (variant)
– Compound Y
– Mixture Y made by a process Q1
– e. coli cells
– tribell
– hydrocyclone
– Japan/45 days
– ABCD
– Tip the Moondust eraser maker
– Jon Jones
– electronics control unit drawing
– protective layer, adhesive layer (variant)
– broomstick with 974 dependent claims
Now it’s time to sell my PLI materials!!!
WRITTEN EXAM OPTION AT USPTO July 21st and July 22nd
Hi all,
I have just received the following announcement by email, braodcasted by PLI, here is an extract:
“Late this past Thursday afternoon, the Patent Office announced the dates and rules for their upcoming paper-based Registration Examination (“Patent Bar Exam”).
The deadline to submit your application to sit for the paper-based Exam is May 15th, and the paper-based Exam will be given on July 21st and 22nd at the Patent Office in Alexandria, VA (and it costs considerably more to take the paper-based version).” end of quote–”
For further details on the written exam, look up the USPTO OED page.
There are pro’s and con’s in taking the written exam but PLI does not recommend to taking the written exam.
Regards, good luck in your study work.
Rolf
Bulldozer – for how much?
I passed today. This was the most difficult test I have ever taken & that is saying something b/c I have taken quite a few standardized tests, including 2 bar exams, the MPRE, LSAT, etc. But I passed, and so can you!
I started studying about 6 weeks ago & probably put in about 125-150 hours of solid hardcore studying. The strategy I used was posted here earlier. Take the 8 exams from 2000-2003 over and over until you master all the concepts from the questions & get at least 95% correct on all the tests, which I did. I chose this strategy b/c I didn’t want to pay $$$ for the course and felt that this was the best chance to pass while investing the minimum amount of time and money. The drawback to this method, as I quickly realized during the test, is that I did not know my way around the MPEP as well as I would have liked & had to guess on several questions.
For what it is worth, I think that my final score was probably somewhere between 75-85 correct. I used the tally grid sheet as explained in an earlier post and also marked if I was confident of the correct answer (i.e. 95-99% sure I got it). I had 57 of these checked. Of the remaining 43 questions, I was usually able to narrow them down to 2 choices & then took an educated guess. So if I give myself 50% of these correct, then my total is around 57 plus 22 = 79, give or take. That’s not a bad cushion, especially if most of the questions that I had to guess were among the 10 “beta” questions that don’t count.
Of the 57 that I was confident that I had correct, about 30 were easy, verbatim straight from the 2000-2003 exams, including the door knob, moon dust eraser etc. The other 27 or so were either easy variants from the prior exams or I was lucky enough to find the answer in the MPEP.
Of the 43 that I had to guess, a bunch were about inventorship & I had no idea. I recall one question where 2 inventors signed the oath but then they get into a big fight & each said that they are the sole inventor. Then what to do? Reissue? Interference? or just file a form as per CFR # bla bla bla? I think I wasted 15 minutes looking through the MPEP to no avail. No clue & had to guess & move on. Make sure that you don’t get sidetracked when looking through the MPEP like I did. I made a few rookie mistakes costing me valuable time, mostly when it was in the PM section & I was getting tired & my mind started to wander. While searching I would sometimes catch myself reading something new in the MPEP & totally unrelated to the question & thinking “That’s an interesting rule” and then reminding myself that this is a test & I need to focus better.
Another guess was who can sign a terminal disclaimer if the rights have been assigned to several places, none of which have a majority share. After searching fruitlessly for what seemed like an eternity, I felt really stupid for not finding the answer & felt like giving up. Thank goodness I kept going.
The test writers were quite clever. They gave me the Jo & Tommy question, where the fact pattern was verbatim from the published test from 2000-2003 (I forgot which test, but this is the one with 20 claims, some were conceived by Jo & others by Tommy, then they split up or something like that etc.) After I finished reading the question carefully to make sure that there were no twists or surprises, I had the correct answer ready and thought “great, another easy one”. Surprise! They came up with new answer choices and the correct answer from the old exam was nowhere to be found. I was like the proverbial “deer in the headlights”.
Another stumper & time waster through the strange MPEP jungle was in Appeals. I think the fact pattern was that on appeal, the BPAI affirmed the rejection on some claims and rejected other claims on new ground. now what? can you immediately get a rehearing on the new ground rejection, or do you first have to deal with the examiner by amending or arguing the rejected claims that were affirmed by the BPAI? Can you do both at the same time? Who f***ing cares?
There were a bunch of 102(e) questions that I had never seen before, many dealing w/ PCT & internationall filings. Fortunately a friend told me about the timelines in the MPEP in section 700 around page 35. There are about a half a dozen or so of these timelines. This was a lifesaver b/c a few of these questions came right from those timelines. I suggest that you familiarize yourself with those timelines before taking the test.
Finally, I got the museum – titanium baseball question. Thanks to this web site, I was prepared for the variants. my question was what is the PUBLICATION date for prior art purposes? I answered the date that it is filed, indexed & catalogued (the date happened to be on July 4).
Hope this helps. Good luck!
Bulldozer,
Where do you get questions published AFTER 2003? Your mention of that got me interested.
Will appreciate any lead,
MCA
Sean- I’m looking to sell for around $1100. It includes everything in like new condition or a sealed wrapper.
MCA- on the top border of this page, go to the link with exam concepts and questions. several of the questions, such as titanium baseball question, lip gloss, broomstick with 974 dependent claims, foil airplane, and a bunch of PCT questions that are listed were administered after 2003. I know they were administered after 2003 because they weren’t presented in any of the tests prior!
Also see the link to EasyBarPass on the right hand column of this page, they allegedly claim that they include questions from 2006 and 2007 exams; I didn’t use them.
I just passed yesterday!!!!
It was very exciting and such a relief. I took the exam about a year ago and got a 68, and didn’t take it again until now because I got sucked into the craziness of law school. The first time I took the exam I studied for about 2 months using the PLI home study course and didn’t know anything about patent law. Since then I’ve taken several patent courses and worked as a patent law clerk. I started studying again around January by reviewing the PLI lectures, and then just focusing on searching the MPEP and doing the past exams over and over again until I knew then inside and out. I also read through this thread and familiarized myself with the recent questions.
I had about 40 repeats and variations including:
-Bloc/cure for cancer
-Tribell
-Japan 45 days
-103(a)/102(e)
-laminate variation (consisting/comprising)
-clock/fan
-Mario Lepieux
-assignee – hasn’t recorded ownership
-dep claim counting
-American resident/PCT in Japanese
-terminal disclaimer
-piecemeal exam
-best mode
-102 + 103 rejection (cumulative)
-which can never be P.A. under 102(a)
-reexam – which is true
-1.131 affidavit
-means for pulling door open
-cancel claims 1 & 2, allow 3
-French/Australian PCT
My morning section was much harder than the after section. The method I used was taking the questions 10 at a time, so I would make the grid for each 10 questions on a separate piece of scratch paper and try to pace myself at 30 minutes per 10 questions. I also used the * for answers I was sure were correct. In the afternoon section my computer froze and they had to move me to a new one. I freaked out a little bit because I had about 8 repeats in the first 12 questions, and I didn’t want to lose anything, but it all was fine after I got moved to a new computer. But the end I had just over 65 *’s.
All I know is it’s all worth it when you see that you’ve passed!!!!
Good luck everyone.
Just took & passed yesterday. I found it very helpful to look take a last minute glance at all of the “*” marked questions from old exams the day before the exam.
There were (no exaggeration) 3 questions exactly of the type of that PCT question – US/RO, published in English but no US resident/national – the countries merely switched from Germany, Sweden, & Costa Rica.
Also, I remember an unusually high number of questions relating to death of the inventor – before filing, during pendency, & after notice of allowance.
I also want to note that the search function on the MPEP in at the Prometric I was at was lightning fast compared to the pdf version on my own laptop.
Finally, as many others have recently noted, I found the second half to be much easier than the 1st.
Just passed the test yesterday. As RP stated before, going over the questions marked with a “*” was very helpful. Also, know the April/October ’03 exams. I have lots of questions on appeal. Specifically 3 questions about the BPAI making a new rejection on appeal and different scenarios on what happens when it is sent back down to the examiner. A few on reissue. 8-10 on PCT including: Japan, Costa Rica, Sweden and two figuring the 102(e) date. Also, one on inequitable conduct that I have never come across before.
Some repeats that I remember:
Tribell
Japan 45 days
Jon/John Jones (different answers given)
Bloc/ cure for cancer
Piecemeal
Multiplicity
Mirror (what would receive a rejection under 112)
Mario Lepieux
Clock/Fan/Lamp
Laminate
Process for Compound Y (150 degree vs. 300 degrees)
Just a final thought. My exam seemed to be just as tough as in the morning as it was in the afternoon. I had all my appeal questions in the afternoon as well as very obscure questions. If I think of any other questions (as I forgot some), I will post them later. Now to sell my PLI stuff!
Passed yesterday. Thanks for everyone’s helpful comments and suggestions.
I probably had 15-20 direct old exam repeats and others that I recognized from the “new” questions listed here. Be sure to at least skim through the old questions on the exam (even though you may recognize the answers right off the bat) because a couple had different answers and/or flipped the call of the question even though the facts were the same. I saw:
Tribell
45 Days (Japan Patent no foreign license)
Cure for cancer
Piecemeal
Mario Lepieux
Clock/Fan/Lamp (dimensions)
Laminate (Variant – new call of the question)
Compound Y 150 deg.
Potter
Small Entity Status (Who can sign)
Documents Requiring Signature
Inequitable Conduct (When can examiner reject on this basis – admission/court proceeding)
Federal Court decisions binding
Able and Baker
Mr. Brick
Door handle
Moon Dust
Had a few crazy ones. They had to do with protest (filed after patent publication but before a first office action), the standard for a restriction requirement relating to combinations/subcombinations, and when an examiner can act on an amendments after appeal (something to do with Section 1210).
Good luck. As others have mentioned, it is important to rack up on as many known old exam questions as possible. With the extra time you gain you can look up those you don’t know.
Hello,
I am reviewing the Bullseye questions. Does anyone have answers to the “test bank questions”? Thanks
Also, what are your experiences with the Bullseye questions..helpful or not for the exam? How did you use these questions to study?
How useful is it to review your past exam? I took the exam last month and made 68. Wondering if I should review my exam. Thanks in advance for your help.
Hi all,
First, I want to THANK YOU for having this site and OMG the comments that people posted were so helpful during my preparation for the patent bar (2nd time). I took my first pbar in Jan and scored 68 with PRG materials only. Then, I found this site and also bought bulleye. Their questions were very helpful (a good start) and was a quick review, also read their mini MPEP.
For my prep – I took the OCT/APR 2003 two times making sure that I knew why the answers were right/wrong…I took notes for all 200 questions and studied those subject matter in the MPEP. I looked up MPEP for every answer choices during my study, so I understand the concept and not just memorizing them. If you can score 90-95% on the 2003 exams and understand the subject matter, then that is enough. Then move on and pratice looking up answer in MPEP for those “reported new questions.” Now those are what people posted based on their memory…so to get the full benefits you should practice looking up the MPEP for each subjects (i.e. 1200 for all the appeal matters) The above method works for me…during the pbar test I knew where I can find the answer in the MPEP….knew the answer to old test questions (some of the old questions had slight variation in both call of questions and/or answer choices — see Colin/Stan above). Also, I did what Luis suggested (see LUIS posting above) about the answer sheets. I made ABCDE for all 100 questions and put check mark by the question that I knew were at least 99% right.
There were about 10-12 repeat/reported new questions in AM session and about 14 in PM session. Some of those were variation of the old test so make sure you know the materials. I had the following repeats:
Japan 45
Tommie/Jo (variation)
Mirror
Titanium baseball
Sweden PCT
102(e)/PCT dates (2-3 questions)
Ben
shoe polish
Hair gel
1.131
Obviousness
Defective PCT application
Death of inventor
Reissue (5-6 questions…I would read MPEP 1400)
Reexamination (at least 6 questions)
fax
Express mail
faxing Request for the PCT appl
147 claims
claim counting
Door handle
moon dust
Potter (variation)
Good Luck all!!! and Thanks again for this site.
Rose,
Congrats. How much study time did you put in? What type of review did you do 1-2 days before the exam?
Hi Sami,
For my first test, I put in a lot of time going through PRG dvd lecture and did about 300 questions from their examware. I think that was very helpful but I wasn’t fast enough during my test. That’s why it is VERY IMPORTANT that you practice taking the APR/OCT 2003 tests (2-3 times) so you will have spare time during the test for the new questions you need to look up in the MPEP.
Two days before my test, I did the APR03AM/OCT03PM then OCT03AM/APR03PM…that gave me something different to test my knowledge. Even though, I could finish all 100 questions in two hours, I basically did what Luis suggested by taking the time to turn all of the ‘ * ‘ into a check mark.
On day before my test, I practice looking up the possible answer for all of the “newly reported questions”….those questions were on the test, so make sure you know where the answer are in the MPEP.
Good Luck…it’s not too hard if you put in the time to prepare.
Hello all,
Just passed the exam today a few hours ago. I can not thank the owner of this website enough for getting me prepared. I had taken the PLI course, but the PLI course alone does not prepare you enough.
I practiced the 2002-2003 old exams at least three times (until I was scoring >95%), and 1999-2001 exams at least once. That really helped.
I also made a chart for all the questions during the first 15 minutes when the tutorial is given), and marked the questions that needed look up later. I had about 10 questions marked in the morning, and about 12 in the afternoon. I had enough time to look them up in each session, and I think I got at least 50% of them right after looking up in the MPEP.
Verbatim repeat of old questions were limited to 20 max, but 70% questions dealt with known concepts from old questions
Some questions that I encountered:
1. Tribell
2. Moondust
3.combination/subcombination (where restriction is proper)
4. Piecemeal
5. Visting attorney in Germany (file by fax)
6. filing in Japan (retroactive foreign filing license within 45 days)
7. Australian PCT (national stage entered without specifically saying that it is national stage, but the oath indicated priority to only a PCT)
8. two questions on PCT 102(e) dates calculation (both IA filed before 11/29/2000)
9. tons of questions on appeal: board affirms rejection partially and also adds its own new ground of rejection: what is the procedure?
10. questions on protest and 1.99 submission
11. ‘means for’ language modified by structure rather than function
12. non-provisional app filed without claim: answer: convert to provisional
13. when claims can be rejected for fraud (i think the answer is during reissue, if examiner comes to know of judicial etermination of fraud)
14. when can you add supplemental paper even after reply brief is filed (I think the answer is if you want to add comments on a recent case judicially determined after the filing of reply brief)
15. assignee not recoded can sign what (I think the answer is small entity status)
16. By when you can get refund for mistakenly paid large entity fee (petition within 3 months, non-extendable)
17. two questions on time calculation for extension of time after advisory action ( 2 month rule)
Hope this helps.
Good luck to all the future test-takers.
Regards,
MCA
I passed the exam yesterday.
Thanks to this site I knew what to expect. Chaps. 700, 1200 and 2100 mostly. A mixture of old questions, questions from this site and betas.
I studied using Longacre every day for 3 months to get this stuff under my skin. There’s just too much interlinked procedure to just try to memorize discreet facts.
I suggest using the MPEP as much as possible so that you can find your way around it. This was invaluable during the exam when I had to answer tricky questions.
Wow, alot of ppl passing it recently.
Passed on my 1st try yesterday, but decided to do the writeup today because, well, beer happens.
My background: I’m a 3L at UH with several courses in patents, and 2 summers interning at various IP firms.
Although I started off with the PLI course, that thing is so old by now, that it’s not really even that useful, especially to those who have taken a basic patent law course or have worked in a patent firm for a little while. I eventually just made my own outline based off material on mypatentbar, and sat there and read the MPEP chapters that are now heavily tested (1200, 1400, 1800, 2200).
Had a total of roughly 40 repeats, with 20 coming the first half and 20 coming the 2nd half. I know this because I had an extra column in my grid system where I’d put an “R” next to the number every time I ran into a repeat. About half of those repeats were from the April, October 2003 tests, the rest were split between the newer post 2003 questions as well as some from the older ones from 2000-2001. Disclaimer: I honestly think I just got lucky with the number of repeats. On the other hand, it does show how important it is to know the old exams as well as the questions people have posted like the back of your hand. I had roughly 1 hour to do lookup on both sections of the exam to go over roughly 5-8 “tough” questions.
I used to not understand how people who have taken the test can remember so many questions from it to pass onto future test takers. Having finally done it myself, all I can say is that it will stick to you.
Here are some new questions that I remember that I don’t remember seeing on mypatentbar or patentbarquestions, and am adding to the pot.
Evil 102(e)
A practitioner files a US provisional on Oct 1, 1999. He then files an IA claiming benefit to the provisional on Oct. 1, 2000. The IA designates the US, and later publishes in English on Nov. 2001. On March 23, 2003 a practitioner files a national app under 111(a) claiming the benefit to the international app. What is the earliest 102(e) date of the national app filed under 111(a)?
Note: The question does NOT mention anything about satisfying fee oath translation requirements of 371(c)
A. March 23, 2003. For IA filed before Nov. 29, 2000. Yes, (e)(1) date: as of National App filing date; (e)(2) date: as of completing national stage requirements of 35 USC 271(1)(2)(4).
Look at Example 6 under MPEP 706.02(f)(1): Additional Priority/Benefit Claims: If a later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the 35 U.S.C. 102(e)(1) date of the application publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application, and the 35 U.S.C. 102(e) date of the patent of the later filed U.S. application would be 01 July 2002 (the date that the earlier-filed IA fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4)).
I remember being super annoyed at this question because it didn’t fit the normal fact pattern, either fulfill 371(c)(1)(2)(4) or being post 20001129. The other answer choices were the provisional date, the IA filing date, the IA publication date. So very evil. I actually had this in my outline, but just freaked when I saw this on the test. Moral of story, the PTO doesn’t just ask the bright line 102(e) stuff, this one was at the bottom of the page that many ppl will just gloss over.
A facsimile using the certificate of transmission is sent out today, sometime in 2001, and is received today. Today is Friday. Which one of these would receive the benefit of the certificate of transmission.
3 answers wrong because they had to do with getting a filing date in a provisional or non-provisional.
B. a divisional filed under 1.53(b)
C. A CPA filed for a design that only meets the requirements of 1.53(d)(1)
A. A CPA can be filed by fax, but doesn’t get the benefit of a certificate of transmission. Be careful of the wording of the question. The question says that the fax is sent and received on the same day to mess you up.
Evil Appeal Question
Which of these is in accordance with proper USPTO practice and procedure?
I. Making new arguments during oral hearings for the first time.
II. Making new arguments after oral hearings for the first time, and nothing is written about it in the appeal brief.
III. Submitting arguments after oral hearings that the practitioner had previously made during prosecution
IV. Submitting new arguments after oral hearings that rely on a recent federal court decision.
Choices were, I only, II only, III only, IV only, III and IV.
I went with IV only. I don’t know whether 3 was right or wrong, but it sounded fishy, and I couldn’t find anything on it despite burning roughly 7 minutes searching.
PCT
A Japanese national who is a US resident files an IA in the US/RO. The IA is filed in Japanese. Everything else about the IA is ok (it has a request, designation, spec, claim, drawing). What will happen now?
A. The USRO will accept the IA and give him a filing date as of the date received and send it to the IB.
B. The USRO will accept the IA and give him a filing date as of the date received, and make him pay a surcharge.
C. The USRO will invite him to send in an English translation of the app within a certain amount of time, and if the applicant does so, afford him a filing date as of the date the translation is received.
Smith and Jones jointly file an IA in the US/RO. The app has the proper request, designation, spec, claim, drawing, and is in English. Later they find out that a third inventor, Figg, should be added to the IA. They fail to do so before 20 months. What is in accordance with PTO rules.
A. Enter the national stage at 30 months by paying the fee only.
B. Enter the national stage at 20 months by submitting a copy of the IA only.
C. Enter the national stage at 30 months by submitting a copy of the IA and the fee.
B. Enter the national stage at 20 months by submitting a copy of the IA and the fee.
E. Can’t remember, but not relevant.
I picked A because when the receiving office is the US, you don’t need to send in a copy of the app again, just pay the fee by 30. I think the whole bit about Figg is just a red herring, along with the 20 month deal since that was under the old PCT rules.
Should be C. Under 1810 Filing Date. An international filing date is accorded to the earliest date on which the requirements under PCT Article 11(1) were satisfied. If the requirements under PCT Article 11(1) are not satisfied as of the date of initial receipt of the international application papers, the receiving Office will invite applicant to correct the deficiency within a set time limit. See PCT Article 11(2) and PCT Rule *>20.341.50(b)41.50(b)< rejection. If the application becomes allowed, the application should not be returned to the Board.
Repeat Questions since 2003.
Mirror
PCT Sweden. Answer is A, they will still get a filing date despite the seemingly negative connotation the answer has.
PCT Germany
PCT Costa Rica
PCT ccar – “correcting obvious errors”
Japan 45 days
Death of inventor – answer is executrix.
Death of inventor – father & son but the estate is over the minimum sum required by state law for the appointment of administrator, so the answer is the executor/legal rep.
Who can sign small entity status
A bunch of 2100 obviousness MPEP lookup type questions
Divisional Reissue. The answer is D!
A reissue with an assignee of the full interest which seeks to delete one hostile inventor as well as broaden does not require the signature of the inventor being deleted.
Electric Fan/Lamp A. Applicant provided specific measurements but the prior art does not. Specifically, the was “silent” as to the dimensions.
Appeal some claims rejected other objected
Spanish Phone
Means + Function – MPEP Lookup Question
Broom – Multiplicity – The examiner should telephone the practitioner
2 month rule – The practitioner sends reply before 2 months, but the advisory action also comes before the end of 3 months. Which date to use for calculation of fee extension? A. From the end of the SSP of 3 months.
Repeat Questions 2003 and prior
2003 OCTOBER PM
6 (moondust), 13 (150 v 300), 18 (Variation of Jon Jones), 27, 28, 43
2003 OCTOBER AM
7 (bloc, cure for cancer), 9 (DRAM), 16 (Tribell), 37 (diamond grit), 44 (Japan 45 days)
2003 APRIL PM
22 (Potter), 26 (Cell Phone, no antenna)
2003 APRIL PM
30, 33 (lancer), 44
2002 OCTOBER AM
12, 34
2002 APRIL PM
2, 18
2002 APRIL AM
36
2000 APRIL AM
10, 14, 17
This just goes to show you how old some of the questions in the PTO database are, and how they refuse to discard some of them.
Conclusion: Know the old questions!
Does any body has any thoughts on question #2 on the post #6? What are the three things can use one signature?
Took the exam yesterday and passed. Had only a handful of repeats (moondust, tribell, bloc, Japan 45 days) in each session. Lots of obscure questions that I had to look up (even had a couple from chapters 800, 900 and 2500, which are supposedly never tested). PCT and appeals were heavily tested – I would recommend reading through those chapters to really get familiar with them. You really have to know your way around the MPEP in order to pass.
anyone studying for CA Bar exam?
…JUST TOOK IT!
GOT 55…HAD ABOUT 7 REPEATS AND WAY TOO HEAVY ON APPEALS AND PCTs..
wished i had a few more repeats like everyone else
hi DP,
Sorry to hear that. I think sometimes it depends on how lucky you are (how many repeats you get). Can you provide some details on any unusual appeal questions/MPEP sections you remember? Thank you
my repeats were pretty much the same as mp345’s exam: Tridell, Moondust, Japan (45 days answer), Bloc, few others
there was bunch of stuff on appeals (1200), I specifically remember having three different questions on what happens when BPAI either affirms, reverses, or partly affirms/reverses examiner’s rejections. I had a question about what’s happens to new matter that was not included in the appeal brief or reply brief during appeal process. also, I had a question about what happens when the examiner rejects claims second time with a new reference, is it appealable?
try to get yourself familiarize with 1200 in a heading style so that it’s easier to locate stuff during the exam.
this is all i can remember for now…wish you best of luck, now to go back to the same library and start studying for NY/NJ bar, is anyone taking it this summer?
DP,
sorry you got screwed by getting only a few repeats. maybe the testers are getting wise and are trying to limit the number of ppl passing by putting in fewer repeats?
no beating around the bush. prepping for the nj & ny bar exam, for me, was a miserable experience. every day the folks at barbri reinforced how little I knew and how much I needed to learn. but as bad as that was, I thought that the patent bar was a much more difficult exam.
My suggestion is to focus on getting as high a score as possible on the multistate exam. even though they say that the multistate is only worth 50% in nj and 40% in ny, it is apparently significantly more determinative in the final outcome because of a greater disparity in multistate scores (i.e, a greater standard deviation in multistate scores as compared to the essay scores). Then do the best you can on the essays, mpt & my multiple choice. good luck!
I have to ask this:
What is the fundamental difference between ex parte reexamination and inter partes reexamination? What is the “hook” to recognize the difference between the two – I am not being able to identify it. Thank you in advance.
Inter partes reexam allows the 3rd party to participate in the reexam proceedings to a greater extent as compared to ex parte reexam. For ex parte reexam proceedings, the 3rd party is pretty much on the outside looking in, whereas for inter partes, the 3rd party can be more active in the proceedings. But the Inter partes procedure was created several years after the ex parte procedure. Thus, inter partes is only available for applications filed on or after Nov. 29, 1999.
So a “hook” is date specific. First check the filing date of the application. If it is before 11/29/99, then only ex parte is available. The next hook is how much the 3rd party wants to participate. So if the application was filed on or after 11/29/99, and the 3rd party wants max participation, then go with inter partes reexam.
Hope this helps.
It does help. Thank you mj!
I just do not understand the last sentence of the following, marked by my [ ]:
2. Improper Incorporation
>37 CFR 1.57(f) addresses corrections of incorporation by reference by inserting the material previously incorporated by reference. A noncompliant incorporation by reference statement may be corrected by an amendment. 37 CFR 1.57(f). However, the amendment must not include new matter. [Incorporating by reference material that was not incorporated by reference on filing of an application may introduce new matter.]
Thank you for previous post. Here is what I saw today:
Mirror (both inherent and perpendicular, but the call of the question is asking for 112 1st)
Parking meter
Ti Ball
Velcor trademark
40%XX, 40% who signs disclaimer
Issued patent, to add 2 inventors, one of original inventors does not agree, what to do
PCT amending abstract
PCT Costa Rica
PCT Sweden
Hair gel
Obvious and non-obvious questions and what overcome, quite a few
Bloc
Appeal question 1214.01, another claim objected, what will happen
Japan 45 days
102(f)
a couple 102(e) and term Qs relating to PCT
FD requirement for reissue
Fax, timely
Amendment after appeal, after brief
147 claims
moon dust
Tribell
Maintenance fee
Design 6 month
103 c
What overcome 102(a)
1.56 fraud
Assignee issue fee transmittal form
Signature requirement
Figure 5 is missing, what to do in order to observe FD, there one other question very similar
Blackwhite photo accept as drawing or not?
Court decision-claim is valid, binding or not, very tricky one?
Restriction requirement
Toothbrush
Best mode
Assignee not of record can sign
John johns
Some are not exact questions but testing the same concepts.
I found out you can opt out the 1 hr break if you want to.
Good luck to every one!
Sean,
In response to #86, the last sentence is misleading. I think what probably happened is a result of the word “may” having more than one interpretation.
1) may – allowed or permitted. (You may come in.)
2) may – a measure of possibility (If I steal, I may go to jail.)
The second definition of “may” is appropriate for your bracketed sentence. (But if you apply the first definition of “may”, it gets quite confusing.) Try replacing the word “may” with “may or may not” and see if this clarifies things.
Also try adding the following after the last sentence: “Therefore if you want to incorporate by reference, make sure its done on the original application as filed. You must be very careful about an AMENDMENT which incorporates by reference because if new matter is introduced, then you run the risk of adversely affecting your priority date.”
Good luck,
LT
I think I understand now. Thank you LT! Why do these things have to be so convoluted. “Legal” English does not have to be difficult English.
Took it today and passed. My repeats were almost identical to cyq3922″s listed above:
Mirror
Parking meter
Ti Ball
VELCRO trademark (I didn’t know this one at all)
40%XYZ, 40% ABC, who signs terminal disclaimer
Issued patent, to add 2 inventors, one of original inventors does not agree, what to do
PCT amending abstract
PCT Costa Rica
PCT Sweden
Hair gel
Obvious and non-obvious questions and what overcome, quite a few
Bloc
Appeal question 1214.01, another claim objected, what will happen
Japan 45 days
102(f)
a couple 102(e) and term Qs relating to PCT
FD requirement for reissue
Fax, timely
Amendment after appeal, after brief
147 claims
moon dust
Tribell
Maintenance fee
Design in country X
What overcome 102(a)
1.56 fraud
Assignee issue fee transmittal form
Signature requirement
Figure 5 is missing, what to do in order to observe FD, there one other question very similar
Blackwhite photo accept as drawing or not?
Court decision-claim is valid, binding or not
Restriction requirement
Toothbrush/Lancer
Best mode
Assignee not of record can sign
John johns
Tommie and Jo
Several others that escape me right now. My advice is to take the practice tests until you know them very well (a bit repetitive, but it works!). But be careful– I had a couple of questions that seemed extremely similar to past test questions that were altered in a way that changed the answer.
Also, the two sessions don’t coincide at all. I had zero PCT questions in the morning, then a slew of them in the afternoon. 706.02(f) was a life-saver, as the examples read directly on the questions.
What is the answer to missing figure 5?
What’s the answer for “40%XYZ, 40% ABC, who signs terminal disclaimer”?
nevermind…I figured it out. My confusion was with the post “55. luis – March 24, 2009” where luis said:
“4) who can sign a terminal disclaimer if applicant assigned 40% to corporation A and 40% to corporation B? read the MPEP on assignments but if you are reading this 10 min before the test know that >>if the application has not assigned 100% of the rights to a single entity then it doesn’t need to cosign or is allowed to sign, therefore only the inventor/applicant can sign<<.”
But In 37 CFR 1.321 and 1490:
The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1)be signed:
(i)by the applicant, or
(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)if there is an assignee of record of the entire interest,
by such assignee, or
(iv)by an attorney or agent of record;
Since the question is related to a patent with divided interest, I believe only (i) and (iv) can sign terminal discliamer for this question. Thus, luis’ interpretation is incorrect.
Hi there,
I guess I wrote it very fast and if you do not pay attention is confusing.
Please read the last part where I said “therefore only the inventor/applicant can sign”.
Where I say “doesn’t need to cosign or is allowed to sign” I’m refering to the corporation A and B.
Hope this helps.
Luis
So, its the inventor applicant only, not the attorney or agent?
Hello All,
In the “exam concepts” section of this site, there are posts which say all must sign the T.D., not just (i) and (iv). Which is correct?
Thank you
MPEP 301:
All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.
An assignement is the transfer of an undivided interest in the invention.
Here we have 2 assignees and the applicant, all have an undivided part interest. So I believe that either the 3 have to sign or the attorney/agent can sign (I apply here 37 CFR 1.321 (ii) or (iv)).
Hi Lizzie,
Thanks. So, the answer is all of the above may sign.
Sarah,
Yes (just be careful how the question read though)
Also just as a note who does NOT have authority to sign a terminal disclaimer in a patent:
an attorney not of record in the patent
Agent or attorney of record can sign.
Thanks to all contributed to this website, I passed the exam two days ago. There were at least 20 questions from 2000 -2003:
1. 10/2003 AM #16 Tribell and aroma therapy
2. 10/2003 Am #7 Bloc- cancer and pain
3. 10/2003 AM #34 Japan 45 days
4. 10/2003 AM #24 Doorknob –no variation
5. 10/2003 AM #11 variation 103 (c) exclusion same answer
6. 10/2003 AM #13 Fee not reduced for small entities
7. 10/2003 PM #4 Markush group
8. 10/2003 PM #6 moon dust
9. 10/2003 PM #19 variation answer E seems different
10. 10/2003 PM #29
11. 10/2003 PM #38
12. 4/2003 PM # 12
13. 4/2003 PM #34 may be variation
14. 4/2003 PM #44
15. 11/1999 AM #49 Best mode
16. 10/2002 AM #30 variation
17. 4/2000 AM #10 Mario Lepieux Wing cap
18. 4/200 AM #42 102(a) prior art
19. 4/2000 AM #47 reexamination
20. Convert a non-provisional to a provisional to preserve a filing date
Most other questions were reported under exam questions and concept. Here are two topics from a few I could not answer right away:
1. 37 CFR 1.99 Third-party submission in published application
2. Reasons for allowance (MPEP 1302.14)
I had many PCT questions, a few 102(e) dates, few appeals, at least 3 drawings related questions, many 103 questions, 2 combination/subcombination questions, two questions on restriction (including one combination/subcombination), and etc. Morning session was a lot harder than the afternoon session. I had only 20 minutes left to review about 10 marked questions. Questions in the afternoon were either repeats of old exam questions or reported recently tested questions. I had an hour left to look up a few of unsure answers.
Good luck to all.
Passed the test this morning! I had a very similar test as Y in the comment above me (i.e. almost all of the same repeats). Morning section was a lot harder–heavy on obscure 103 situations and maybe 5 repeats.
I had 2 different questions that addressed the same topic: Which of the following must be in a provisional app? The only two credible choices were: (1) a proper coversheet indicating that the application is a provisional application (or something like that), and (2) a spec satisfying 112 para. 1 with any necessary drawings.
I thought both were necessary, but I think (2) is the appropriate answer because it was most in line w/ the MPEP text.
Another one that stumped me was one that I initially thought was a repeat (and it might be one). It involved amendments that could be made at the time or after an appeal brief had been filed.
From 1206:
Amendments filed on or after the date of filing a brief pursuant to 37 CFR 41.37 may be admitted only to:
(A) cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or
(B) rewrite dependent claims into independent form.
All the answer choices were way off except one that said “rewrite rejected dependent claims into independent form.” This injects “rejected” into the mix, which seems to imply that something is wrong with the patentability of the claim itself, and not simply an objection to it for depending on a rejected independent claim. Furthermore its a misquote of the MPEP. But none of the other choices suggested canceling claims, so I went with it.
Also one that asked what complies w/ MPEP procedure, where each choice began w/ the word “Rapidity,” its an easy textual lookup, but the answer is in 2100. The correct choice is something like the “Rapidity of the innovation w/in a field is evidence of the skill w/in that art” or something like that.
That’s all I can remember right now. I’m off to grab a nap. Good luck studying, this website is a great resource.
Tribell and aroma therapy (what a good last question to have)
Bloc- cancer and pain
Japan 45 days
moon dust
Laurel, Abbot, and Hardy
Japan PCT
piecemeal examination
Laminate question (which is anticipated)
new ground of rejection in an appeal
enablement/written description rejection and overcoming written description
parking meter
titanium ball in museum
hair gel
1.56 fraud
DRAM
150 v. 300 melting point question
how validity or invalidity by a federal court affects how the Board interprets
Death of an inventor
Jon (John) Jones
What can assignee not of record sign?
Inventors C&D inadvertently omitted before patent issues. patent assigned to corp. by A&B. A will sign on C&D, B won’t. How to proceed?
combination/subcombination double patenting
whether a certain rejection is a statutory double patenting, nonstatutory double patenting, or just a 103(a)
Proper format of independent claim
2 112 Para 6 Means for questions (both lookups)
52 tables on CD-ROM
Hydrocyclone
Foil on airplane
Lip gloss
Broom with a lot of dependent claims.
no mirror question
no sweden or costa rica
Passed on the first try, fortunately I had a lot of repeats as stated above. I was in at 8AM, out by 2PM. I used headphones provided by Prometric to keep noise out because a lot of people were in the testing center throughout the day. The computers were new and the MPEP interface was reasonable. The answer sheet helped a lot.
Thanks Redbull, mypatentbar for the new questions plus old tests, and the patbar.com materials. Now to study for the state bar.
Hi Patentsandmore,
Can you provide some more info on this question:
Inventors C&D inadvertently omitted before patent issues. patent assigned to corp. by A&B. A will sign on C&D, B won’t. How to proceed?
Do you remember answer? what section
Sam,
I believe and don’t quote me on this that the correct answer is to have file a non broadening reissue (MPEP 1412.04) because the other option(s) included corrections for pending apps and a certificate of correction answer that required the inventor that didn’t want to sign on to sign (37 CFR 1.324) which wasn’t an option. Hope that helps. Good luck!
Passed today! This was my 2nd try. 1st try was back in ’05 before i started law school. I did PLI. This time around, I re-used those materials for the audio lecture, but mainly did prior exams. I was able to recognize a lot of questions pretty fast and that helped out a lot.
I had a lot of the same repeats as Y, TexPatBar, and Patentsandmore
toothbrush on/off switch
5 steps to cross road
design patent in country x
3rd party submission – japan publication
147 claims
tommie and jo
mirror
PCT costa rica
PCT sweden
PCT germany (all 3 same questions, just different countries)
when to limit action (all of the above…too informal, multiplicity, etc.)
when legal rep not needed to sign oath for inventor? (minor can sign)
best mode
correcting address of inventor after oath filed
inventors ABC, B citizenship wrong on oath
velcro
ISA makes abstract when missing
Buzzcuts
102d – published not needed
102f
filing date requirements for provisional, non-provisional, reissue
1.56 fraud
removing benefit of priority
new rejection for appeal by board-rehearing on some, prosecution on other claims
reduction to practice when properly performed
composition xyz – app to grow hair, 100 yr old patent disclose xyz as shoe polish
Inventors C&D inadvertently omitted before patent issues. patent assigned to corp. by A&B. A will sign on C&D, B won’t. How to proceed? (MPEP 1412.04 Where an inventor is being added in a reissue application to correct inventorship in a patent, the inventor being added must sign the reissue oath or declaration together with the inventors previously designated on the patent)
Had a question i haven’t seen before…
inventors J&B invent X, but B thinks he is sole inventor & refuse to sign, J files w/o B signing oath listing J&B as inventors. what can B do? Options were along the lines of: file separate app, protest, cert of correction after issue to include B as inventor (i didn’t have a clue)
notice of allowance with patentable subject matter, but spec objected because fig. 5 missing. ex parte quayle action started. how to respond (file fig. 5; other answers suggested rce, continuation, arg against)
when is only filing an ids a proper submission with rce? (after notice of allowance)
I too got stuck on the Appeals question TexPatBar and I also selected the same answer.
Dear Seas,
Congrats! I am taking the exam soon. Can you provide some more detail on these questions, and what the answer was if you can remember?
3rd party submission – japan publication
1.56 fraud
removing benefit of priority
Buzzcuts
inventors ABC, B citizenship wrong on oath
Thanks
3rd party submission – japan publication
– see 10.03.10p
1.56 fraud
– this question was asked “which is not true”. answer choices ranged in different topics, and answer was “There is a duty to submit information which is not material to the patentability of any existing claim.” If you look up 1.56, you will see that “There is NO duty to submit information which is not material to the patentability of any existing claim.”
Buzzcuts
– Similar to the Einstein question from a prior exams. I think i’ve seen this question referred to as “hairgel”. A gets patent on hairgel and accuses B of infringing hairgel patent. B has been selling hairgel before A filed, and B published an ad more than 1 yr of A filing. B wants to participate as much as he can, what can B do? Answer hinges on A’s filing date. Answer is ex parte reexam, can’t do inter parte because filing date does not allow inter parte.
Inventors ABC, B citizenship wrong on oath.
– Inventors A, B & C, execute oath, but B’s citizenship on the oath is incorrect. How can this be fixed? Answer is file supplemental oath with A, B & C listed as inventors, but only signed by B.
Removing benefit of Priority
– question stated that inventor wanted to extend his patent term by removing the benefit of priority to parent application. How is this done? I didn’t know how to answer this one…
I remember another question i didn’t previously list…re: MPEP 2012
– in reissue, when will statement of lack of deceptive intent in oath be challenged? “in special circumstances such as an admission or judicial determination of fraud, inequitable conduct or violation of the duty of disclosure, where no investigation need be made and the fact of the admission or judicial determination exists per se.” (answer i selected stated that examiner was aware of a judicial determination of fraud by the inventor)
good luck!
thanks a bunch
Hey everybody. I just passed yesterday on my first try after studying about 75 hours and I attribute it to the PLI course, past exams, and THIS WEBSITE! There were soooo many repeat questions. I honestly went in expecting to fail (I anticipated having a lot more time to study, but was super busy at my job), but I didn’t and I really think it is because I knew the old tests and the questions and answers posted on this site. I had:
Einstein-Weissman,
5 PCT questions listed previously re German/Swedish/Mexican/ Japanese-45day/Australian-30 month,
Clock-Lamp,
40% assignee/terminal disclaimer,
5 steps to cross road,
minor legal representative,
Bloc cancer/pain
Means-plus-function language needed
nearly all the Appeals questions listed in previous posts
Moon dust
What is/is not needed for enabling
several others I can’t recall off the top of my head…
I also had 2-3 interference questions which was NOT expected and I think they are beta questions.
Another interesting question I had was when new arguments can be submitted after you file a reply brief and are awaiting a decision by the Board. They try and trick you up, but the only new argument you can submit is if there has been a new Fed case decision since filing your brief- you can use that and explain why it is relevant, that is the ONLY new argument you can make (you can either submit in paper form or argue it at a requested oral hearing)
Really, though, if you are reading this and trying to figure out how to study/how much to study:
DO
-know questions/answers posted here
-know old test questions/answers
-searches of the MPEP as PDF and experiment with unique words and phrases to find answers
DO NOT
-read the MPEP as a way to study
-if you take a course, don’t waste time on claim drafting or writing claims, etc. You can worry about that after the test, it won’t help
Good luck!!!
Hi Bobby,
Congratulations on your pass.
Can you please provide more information on the interesting question about the new argument? I searched “new argument” in 1200. However nothing came out as what you said.
Thanks.
Hey Cindy,
Below is MPEP 1209/Rule 41.47- look under (e)(1) and (e)(2) which basically says you can only use new arguments based on recent Board decisions or Fed decisions. There is another part somewhere that says pretty much the same thing for written form (as opposed to oral hearing). If you get that question, this is the ONLY thing “new arguments” can be based on. Hope that helps.
1209 Oral Hearing
**>
37 CFR 41.47 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.
(b) If appellant desires an oral hearing, appellant must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months from the date of the examiner’s answer or supplemental examiner’s answer.
(c) If no request and fee for oral hearing have been timely filed by appellant as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
(d) If appellant has complied with all the requirements of paragraph (b) of this section, a date for the oral hearing will be set, and due notice thereof given to appellant. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. A hearing will be held as stated in the notice, and oral argument will ordinarily be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered.
(e)
(1) Appellant will argue first and may reserve time for rebuttal. At the oral hearing, appellant may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and evidence relied upon in an answer or a supplemental answer except as permitted by paragraph (e)(2) of this section.
(2) Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
Thank you so much Bobby.
This really helped a lot.
This site is amazing!! Thanks soo much for putting this all together. Patent bar courses are outrageously priced and all the material on this site is more than sufficient to pass the bar. Thanks!!
Is anybody planning on taking the exam towards the end of June?
I took the exam on Monday, May 18 in Bedford, Texas, and passed! I took the PLI live course in January, and did practice questions they provided for a few months. Then, about a month before the exam, I began doing practice exams from 2002-2003. This site was also a huge help in the final weeks, especially the repeat questions. I had several repeat questions (described in detail below, though not complete–sorry, can’t remember them all).
I had several questions on the PCT and 102(e). A quick word on this: these topics are complicated, but the questions I had on them were very manageable. The essence of the PCT questions dealt with how to get a filing date and whether the USPTO could serve as a Receiving Office (RO/US — I always think of Princess Bride). For 102(e) know that there is a difference between pre- and post-Nov. 29, 2000 filings.
I also had a few questions on what can/can’t be faxed; third party submissions; and re-examination. The questions that drew my attention were directed to the filing of drawings. For example, if you file an app on Jan 4 without drawings, but with a complete spec and claims, and the PTO determines you need drawings, what is the filing date? I had an idea on this, but am not sure it’s correct.
Repeat questions:
Laurel, Abbot and Hardy
Smith Laminate
Bloc
Smith DRAM
Prior art (4.00.42a)
Copper Substrate
Tribell
Reexam (10.03.6c)
Mr. Brick
Beck melting point.
If I think of more, I will repost. Best of luck studying. I agree with what folks have said on this site. Do practice problems, especially from the 2002-2003 exams. Know the repeat questions (fyi, the only reason I finished in time is because I knew the repeats). Don’t panic!
Hi guptroop,
Congrats on passing the exam! Do you still have your PLI materials and are you looking at selling those?? I am looking at purchasing a used bar review course.
Thanks,
Just remembered: Moon dust and Japanese 45 days.
Sorry — also had:
Hydrocylone
52 tables CD-ROM
Jon (John) Jones
Piecemeal Examination
GUPTROOP-
could you please give me more information on 52tables CD-Rom? If tables are more than 51 pages does it have to be on a CD?
Thank you in advance!
Inventors C&D inadvertently omitted before patent issues. patent assigned to corp. by A&B. A will sign on C&D, B won’t. How to proceed?
wut is the answer to this?
thank you
Re: Thank you — May 19, 2009:
1. The 52 tables question has to do with submissions to the PTO on CD-ROM. It’s actually a trick question. I believe the facts indicate that there are 52 tables, each taking up 1/2 a page. The pertinent section of MPEP is 608.05.
MPEP 608.05: “A single table contained on 51 pages or more, or if there are multiple tables in an application and the total number of pages of the tables exceeds one hundred pages, the tables may be submitted on a CDROM or CD-R (in compliance with 37 CFR 1.52(e) and 37 CFR 1.58).”
Took the exam today (third try
) and passed.
One tip: I reread the 2003 exams the night before and in the morning. I then scanned ALL the questions first to see if any were repeats, and answered them first. I think this helped.
Again, the PM session went quicker than the AM session. I had 45 minutes to look up answers, while in the AM it was 20 min or so.
Hello Tim
Congrats! Do you remember any unusual questions or some topics you did not expect? Thanks
Not really – the worst were the questions like “which of these (five) is not in accord with USPTO procedures?”, and they all come from different MPEP chapters.
I think having a good command of the MPEP organization is the most important factor.
Hi All,
I passed the test today on my first try. I did the PLI course and did most of what others have recommended (old exams, and “new” questions on this site and patentbarquestions.com). I was surprised by how many repeats (about 60%). I was able to look up perhaps a handful of question on the MPEP, it was not very convenient. Some of the repeats were verbatim, but most had some changes in them.
These are some of what I can remember:
Tribell
Mirror
Moondust
Jon Jones (file ADS to correct)
Smith & Jones (cell phone with no antenna)
Bloc (cure for cancer/pain reliever)
2 PCT, almost identical pre 11/29/2000, 102(e) date (both when oath was filed)
PCT with priority to non-provisional and provisional asking for when patent term starts (filing date of NPA).
PCT with Swedish applicant (filing date granted, sent to IB)
PCT with Costa Rica applicant (filing date granted, sent to IB)
Non-provisional filed without claim, how to keep the filing date (convert to Provisional).
How to make sure company xyz is owner on the patent (fee transmittal)
A couple of fax questions
A couple of certificate of mailing questions
A couple of USPS Express mail questions
Museum Ti ball (prior art date is when indexed, I think)
2 almost identical questions on new ground of rejection by BPAI
2 almost identical questions about a few claims rejected and a few allowed after appeal, what happens next?
Appeal brief is not filed, what happens (appeal ends but the app goes back to examiner).
When can RCE be filed with just IDS for submission? (I think after allowance, but not sure)
App is filed by A and B, but B thinks he should be the sole inventor, what can he do (I think file his own app and request interference)
A tough question on 102(f), mostly look up from 2100. What are the invention concepts of 102(f).
Several questions on 102(e), 102(a) with familiar fact patterns to identify how to overcome the rejections
2 or 3 questions on 103 obviousness (hard ones)
Restriction requirement and how examiner decides on restriction.
What can an assignee not of record sign? (small entity)
Inventor assigns part of patent to practitioner, then dies, what then? (I think practitioner can continue prosecution).
Claim counting (still 147!).
How to correct citizenship of inventor (new oath/declaration, I think).
How to correct the address (ADS, I think).
Something about fraud and what examiner does, but I don’t remember the details.
103(c) exception (applied to 102efg prior art applied to 103(a) rejections)
How to argue for utility aspect of 112?
Hair growth remedy and old shoe polish product (claim a method of hair growth).
Electric toothbrush (claim power source or something like that).
Double patenting question (distinguish between statutory, judicial, and provisional double patenting & 102(e)).
Application lost at USPTO, how to prove it was sent? (post card from PTO with details, I think)
Nonpublication and Japan filing (45 days to report).
Fig. 5 missing from filed app, how to not lose provisional filing date priority (send it by USPS Express mail).
A few reexam or reexam-related questions (know only patents and printed pubs can be used, also inter-parte after Nov. 29, 1999, reexam can be filed up to 6 years after patent expires, practitioner can file on behalf of unnamed 3rd party, and so forth).
Terminal disclaimer when 40%, 40% assignees plus applicant (I think all 3 must sign together).
Piecemeal exam (all 4 conditions provided, just select all),
PCT app filed with errors (have 30 days to fix)
Means+function question, door knob and handle versus reference (just replace the claim with the actual structure).
ISA edits the abstract in PCT app, you are not happy with it. What to do (you have 30 days to comment on it, after ISA report).
Reissue app filed to claim forgotten foreign priority, what is needed?
Maintenance fee returned, how to send it back properly and what petition to file?
Asking about competitor’s app which is not published, what can you get from PTO (probably nothing).
How to cancel claim of foreign priority to increase patent term (amend the spec).
Good luck
Agree with Mohamad’s statements. Had at least about 40% repeats. My recommendation is to review every exam till 2000.
Hi Ash,
Wow that many repeats? Did you see any new questions? I am scheduled to take the test in mid July; what are your tips?
Means or step plus function claims (35 USC 112 6th paragragh)
Even after reading the corresponding part in chapter 2100, I am still very confused. Can someone give me some old test exam questions to help me to understand the concept? Thank you in advance.
A basic qs: CPA practice is applicable for design (and not plant and utility applicns) only from which date: is it may 29 2000 or is it July 14 2003. I am very confused with this one- all the prev tests I have taken inform about the former date while MPEP 201.06(d) clearly states otherwise. Please help- I am taking the exam next week. Thank you in advance
Hi,
The following document from the USPTO would seem to support the 7/14/03 date:
http://www.uspto.gov/web/offices/com/sol/notices/68fr32376.pdf
See ‘Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications’…
Hope this helps… I am afraid this is hardly the first item where there would appear to be inconsistencies between dates as enumerated in different parts of the MPEP…
Section 201.06 also mentions a June 1995 date?
Dan,
I cant think of any new questions at the top of my head. The test center prevents you from noting down questions. My advise is to go over all the exam question, but delve deep into each answer and understand the possibilities. If you can supplement that with this site, you should be good to go.
I just found something interesting while doing question #19 (October 15, 2003, afternoon exam). I tried to find “mechanical equivalents” from MPEP chapter 2100 (using the find function in adobe acrobat 5)since it’s te exact phrase from answer E. Nothing came out. But it’s actually in 2144.06 (II). However the two words are not in the same line. It was broken into two lines. Has anyone seen anything similar?
The search function in the higher version of adobe can find the exact phase without any problem.
cindy,
You’re right about that- I found the same too- only mechanical search instead of mechanical equivalent worked.
I tried a few other search words where the sentence was staggered in two lines and it does not work unless it is in the same line
I have downloaded the recent version of MPEP rev.6 2007 (from USPTO website) and see a major discrepancy from the version I was used to in the PLI patware (2005). Chpt 2100: secn 2141: Basic factual inquiries of Graham vs. Deere: there were 4 mentioned in the MPEP: scope and content of prior art, diff in prior art and claim, level of skill, evidence of 2ndry considern. In this one, only 3 are mentioned of which 1st and 2nd are repeats i.e.diff in prior art and claim. Am I missing something? Aren’t there 4 basis for factual enquiries
Also a few qs:
1. A nonenabling ref may qualify as prior art for obviousness under 103- does this mean that a ref which doesn’t have enabling disclosure (attempts to make composn were unsuccesful bfore the date of invn) qualifies as prior art under 103?
2. Also, are only 102(b), (c) and (d) statutory bars? why?
To answer 118, Thankyou- I got the same question: Inventors C&D left out of patent issued to 100% Assignee. Inventor A agrees but inventor B disagrees. Action choice: I chose the one where assignee could file a reissue (from fact pattern) without A&B consent.
PCT- I got all the recently reported new questions.
Swedish – a variation- forward to IB may no longer be correct choice. Instead, choice that includes phrase (USA)’not competent site’ may be most correct.
PCT- Q changed but similar fact pattern 10.03.#14PM;#15PM.
PCT- Abstract- ’30 day reply’.
The following are questions from Oct 03 exams. I am following this sites format except for underlining Q I say #Q. Followed byAM/PM.
Claim counting – Ans 147 10.03.#50AM.
Japan – Ans 45days10.03.#44AM.
Tribell- 10.03.#16AM
Step for crossing- 10.03.#23.AM.
Door Handle- 10.03.#24.AM.
RCE- variation -10.03.#36.AM.
Action after 2x rejection – 2Q 10.03.#42.AM.
1)same
2)variation
Appeal- 10.03.#38AM and read MPEP 1214.06 Examiner sustained in whole or part and expect to be heavily tested on this concept.
Bloc- 10.03.#7.AM
102d- 10.03.#8.AM
Claim- 10.03.#10;#47AM
Enablement- 10.03.#18AM
Publication as References-10.03.#29AM – Choose ‘July4th’ in phrase
10.03#46AM
Abandoned-10.03.#46AM
Search- many variations- 10.03.#4PM
Moondust- 10.03.#6PM
Anticipation- 10.03.#7PM variation
102g- 10.03.#8 variation
TP submission-answer-Sole Japanese Publication-10.03.#10PM
103 obviousness- variation but same concepts-10.03#16PM
Jon Jones Design variation- choice (c) not there-10.03.#18PM
Reply to nonfinal office action variation- 10.03.#21PM
Oath/ADS and address/citizenship-10.03.#22PM;#43PM
Parking meter-10.03.#28PM
Design 102d-10.03.#29PM
Smith & Jones vs Bell & Watson cell phone 10.03.#30PM
Certificate of mailing and foreign country concept-10.03.#34
XYZ assignee and divisional concept-10.03.#38PM
Prima Facie concepts drawn similar to 10.03.#33PM
And also read MPEP 2142 ‘…Basic Criteria’.
i passed! 2nd try.
Scored a 63 on the 1st try after paying nearly $3K for the prep class. I won’t say which one.
This time I changed my test prep strategy. I spent whatever time I had to study on the past exams until I knew every question. Also used this web site. That’s it. I got about 60% repeats from the old tests plus several others from this web site. My test sounds like it easily could have been the same test as Mohammad and Roy. My 2nd test was similar to my 1st test, only this time it was soooo much easier (because I already knew the answers to over 70% of the questions — duh!).
Thank you to all who contributed to this web site. You had a hand in helping me to pass!
Greenhorn:
Congrads. Did you do any exams prior to 2002? And if you did, would you suggest doing them or not. Also did many of the repeats have variations from the old exams or what majority were verbatim.
Thanks
Roy,
What was the answer to the John/Jon variation you saw? (how to correct a typo in inventor’s name). If not answer C, the only other thing I can think of is to file a supple ADS? Please advise
Thanks in advance
Sam,
If you re referring to the spelling question, the answer is to contact the PTO by letter.
Yuri
Yes it is this one Yuri. But ROy says he saw the variation. Is this the answer to the variation?
Yuri,
I went back to the 2000 exams & knew all the questions inside and out. Yes, there were a a bunch of questions from the 2000 and 2001 exams. So I would suggest going back to 2000.
I know that learning more exams is not fun, but if you already did the 2002 and 2003 exams, then it will not be as difficult for you to do 2000 and 2001 because there are some questions from 2000 and 2001 that were repeated in 2002 and 2003. So you already did those questions. Plus you are already familiar with the general concepts so you should have an easier time with the 2000 and 2001 exams.
I wrote down the information of exactly how many repeats were verbatim or variations on scrap paper, but they made me turn everything in before I left. I was not going to risk trying to smuggle it out, especially after passing the test. So this is just from memory. About 2/3 repeats were verbatim, maybe 1/3 were variants. Many variants were of the type where the question was verbatim but the answer choices were different. That is still an advantage because at least I did not need to waste any time and energy just trying to understand the question, unlike my first time around.
I also suggest knowing the post-2003 exam questions from this web site. I think that I had about 15-20 of these on my test.
What an advantage for me the 2nd time around. The 1st time, I prepared by mainly focusing on what the course taught but did not know the old exams inside and out. Plus I was not aware of this blog. I was fairly sure that I did not pass the test before I hit the “exit” button.
I used the wrong strategy for passing the test. This time around, I had already seen and studied about 80 of my test questions beforehand and instantly knew the answers to most of them. I don’t mean to boast or brag, but I knew that I passed the test with about 10 questions remaining.
Good luck.
Dear All：
Did someone know the answer of the question of Combination/ Subcombination ?
Thanks a lot
BC
Sam
To answer your Jon Jones/ADS question (137/139 entry):
I got a variation answer choice as I said above. The incorrect choices appeared similar to those in the original. So, you definitely want to look at the explanations in this 2003 question to know what is incorrect. I apologize – I can’t remember the exact answer.
Good luck!
Roy
Hi All,
I am happy to have stumbled upon this site. I’ve been studying by myself for the past couple of months and using the outline from freepatentbar.com and the materials from bullseye.
i’m able to get about 95% right on the four 2002&2003 tests consistently but i didnt really use the MPEP at all while i’ve been taking the practice tests.
i’ve been reading over the right and wrong answers and generally understand what the question is about but just haven’t been using the MPEP.
am i screwing myself? anyone have any advice for me on how to learn how to use the MPEP as fast/as best as possible?
i’ve downloaded acrobat 5.0 and MPEP Version 8 Revision 4 and its one long PDF file. When you actually take the patent bar is it the same? i.e., do i search the WHOLE MPEP at once or do i have to search by chapter?
If i have to search by chapter, am i just supposed to “figure” out what chapter each question is supposed to be in?
i’m a bit confused about how to exactly use the MPEP. any advice would be most appreciated.
Thanks!
Hi dc…
I do think it is pretty important that you learn to navigate through the MPEP during the test… In spite of all the tests you are taking, there will be questions that you won’t know the answer to, and so it is important that you figure out where to look (i.e., questions on elements of a patent, Chapter 600; questions on elements of prosecution, Chapter 700, and patentability, Chapter 2100)…
So yes, in time, you will be able to figure out which chapter to look for… If you can’t, you can always look at the index (which is important for you to learn to navigate)…
One more thing: it seems to me that you have downloaded the full MPEP, which is a monster… You should get used to looking to it in Chapter chunks; it makes for a much more manageable search…
Hope this helps!!!
Does anyone have the freepatentbar.com study outline or know where to find it? it doesn’t seem to be on their site anymore.
if you have it pls send to patentbar@me.com
Well,
I took my test today, and I passed… I thought I’d add a few comments to what has been already posted, as my approach to the test might have been slightly different…
With a very busy job at a High Tech startup, and a 2-year-old daughter, my time to study has been extremely reduced… So I took about 15 months, from the time I started studying until today… I purchased a used copy of the PLI course, and listened to all the tapes about 10 times each (this is no joke, by now I can recite those tapes by memory!!!)… I also went through of couple of ultra-high-intensity periods at work where I could hardly study anything… But the effect all this had was to enable me to digest the MPEP in a fairly meticulous way…
Once I was done with the core material, I started working on available tests, which I believe is the absolute best way to truly master the relevant concepts (not to mention the added bonus of having at least 20-25 repeat questions show up in the test)… I don’t know that there is much sense in listing them, as many posts have done it before: the PCT filing in the USPTO with a citizen from Costa Rica (irrelevant, as long as there is at least one US Citizen/Resident); the two flavors of the PCT filing claiming priority from a German patent filed before and after 11/29/00 (before, 102(e) date is when declaration shows up; after, THERE IS NO 102(e) date on applications that stem from PCT filings not in Engish); other questions will come to me once my brain awakes from the taking of the test…
So this is what I recommend:
– Try taking as many tests as possible, in timed three-hour sits; you need to get used to the timing stress (if at all possible, I would suggest a full-day session with two three-hour sits). After you take the tests, carefully review them (at least the questions you get wrong) and make very, very sure you understand why you got them wrong…
– Try running your tests on the very oldest version of Acrobat Reader, because you will not get the cludgy interface in the newer versions…
– A previous post recommended reviewing during the break between tests; I tried doing that, but my head was about to explode, and so I just used the remaining of the time to relax and regroup…
Good luck to everybody who will take the test, and congratulations on those who have passed it!!!
Hey all, I just took the exam and passed!! Am very glad that I passed on the first try esp since I come from a non-law background. I have a Ph.D in molecular and cell biol and post doc in biomed sciences. This site helped me a lot.
Basically I worked on home study guide from PLI and took lots of exam from the patware as well as exams from 2000 to 2003. Take the exams till you get 100% and understand the concepts. Work on the exams with MPEP, use acrobat reader 5 version.
I did not get many repeats from old exam in my first session( maybe 10) and a few variants. Also some qs that are posted by the prev exam takers. Make sure you know where to look them up in MPEP- many qs have 2 ans which are very close and you cannot tell the right ans till you refer to the MPEP. I finished both my sessions in the first hour and spent the remaining two hours checking ans from MPEP. In the first session, I was iffy about 3-4 ans but had found ans to the others verbatim from MPEP. In the second session, other than the mirror qs (I ain’t sure if my ans was correct),I think I got all the others right. So mastering the MPEP in terms of looking it up and also the right combn of knowledge and past exams help to pass! Good Luck all the exam takers, congrats to all who passed and thank you for this wonderful site
Newbee Congrats!!
Do you remember any unusual strange questions from your exam?? Thank you
Just got home!
Passed on my first try. I took the PLI home study course. Did all the exams that were on Patware at least 2 times. Did a few more of the older exams that are not on Patware. And reviewed all the repeat questions pointed out on this site. My biggest problem was using the funky acrobat that they have and the fact that the resolution on the monitors is much lower, so you are stuck scrolling quite a bit. As such, I found myself using the MPEP less than when I did the practice exams. In the end, know the basic materials that keep coming up in every exam, review the repeats pointed out here, and know how to search the MPEP.
I took the test yesterday and passed…
If anyone is interested in the PLI materials selling them dirty cheap.
Thanks to this cite I was able to get my thoughts straight when studying. It was a big help.
Is it a goof course?
How much does it cost. I may be in terested in buying it. Is your the home study version one?
Hi Juan,
Congrats on passing the Exam! Is your PLI material still available for sale? I am very interested as I’m just begining to study for the pat bar. The current material test is the MPEP version 8 rev. 4, i think. Is this what u were tested on? Looking forward to your reply.
Thanks.
Sam, there weren’t any qs which were obscure- however was heavily tested on appeal, PCT, restriction- when is restriction proper. Know those chpt really well. Other than that there were atleast 4-5 qs fro 200 and 100. Can’t remember the exact content of the qs though. However I could easily find the ans from MPEP. They were verbatim. If you have PLI patware, use the customised exam option and take tests on above mentioned chpt- will help you familiarize with these chpts. Also, while taking the exam, minimize the MPEP window with your mouse dragging on the edges- that way you can compare key words directly from the exam.
Also, anyone interested in PLI materials?
Thanks
Hi Newbie… Congrats on passing! I plan to take the exam at the end of summer and would be interested in the used copy of PLI, let me know if you still have it.
Sure Jay, Email me at sheelk@hotmail.com and I’ll give you the details. In addition I can give you my notes- from chpt 700 and 2100 which you ought to know cold.
I’m looking for a PBE review course any sugesstion? I saw the cheap one Omniprep ($500, I think it stinks though- no teaching just a bunch of ols tests for you to do 2000-2003).
Anyone know anything about PES system (from Colorado)? It’s pretty cheap too ($650). But is it good? should I buy it?
ANyone have any experience with a good course please help.
Thanks
Hello Donald,
Did you use PES book 11 years back? I find it to be cheap. Do not have cash for PLI.
Thanks
Dey
Newbie,
Congratulations on your pass! Did you run into the situation that two words that you searched were staggered in two lines?
I am thinking to take the exame in August. I am using the PLI and Bullseye material. My study stratergy is I read the outline of each chapter; then i start working on questions that relate to those chapters (Bullseye has a pdf doc with grouped questions by chpater). I am at chpater 2100 right now. What is your suggestion for my last two months’ preparation?
Thank you so much.
Hi Cindy:
I am just curious about Bullseye materials. Is it any good in term of explaining MPEP? My strategy is to find something to learn and understand the MPEP then take a lot of old exams.
Thanks for reading
Donald,
I took it studying with PLI, trying to get rid of mine for cheap.
email me at Jarias5121@aol.com, if you are interested.
I think it’s pretty nice. It supplements PLI. It also contains a question bank with most asked questions at prometric.
I have a question about question #8, Oct 16, 2002, pm
8. An application includes independent claims 1 and 2. Which of the following, in a reply to a non-final Office Action, provides the proper basis for a rejection under 35 USC 112 (1)?
(B)Applicant amends claim 1 of the originally filed application by adding a limitation that was written in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1.
(C) Applicant amends and broaden claim 2 by removing a limitation which was written in the original disclosure of the application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.
The answer said the correct answer is B. C is not correct because the original disclosure enables claim 2.
But if we look at C, it removed a limitation which was written in the original disclosure. Doesn’t it trigger the written description rejection of 35 USC 112 (1)?
Following up my preceding post:
MPEP 2163.05 Changes to the Scope of Claims
I Broadening Claim
Omission of a limitation
“Under certain circumstances, omission of a lmitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention.”
“A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement.”
In this sense, (C) very likely does not comply with the written description requirement if the limitation it removed is an essential/critical feature.
Written description and enablement requirement are independent from each other. They can be the basis for a rejection under 35 USC 112(1) respectively.
Cindy,
that’s a good strategy of studying. For the next two months after you are done with your chapterr revisions, concentrate on prev exams in addition to customized exams from PLI software.
Also, I did not encounter the problem of words staggerd in two lines. The strategy i used for searching was to go to the particular section in MPEP and then search for the words- this becomes easy to find rather than going thro’ the whole chpt- esp 700, 2100 and 1800 since they are big chpts.
Good Luck!!
Anyone aware of good websites to look for jobs in Law Firms? I have come across a few on the net but any inputs will be appreciated.
Thanks
Hi Newbee,
Not sure what you are looking for, but
http://www.indeed.com
is a very good, daily site for all US Patent Agent / Patent Lawyer jobs, compiled from different sources, i.e. newspapers, postings, other web sites, etc., easy to check what is new, every day, comes automatically to your mailbox.
Good luck with your search,
Rolf
Just took the exam today and failed it by 3 q’s. I think I am mastering the exams from 00 to 03. The failed rate is less then 5%. I don’t understand what went wrong.
It seems that I need to change the study material. Been using omniprep – which has so many holes.
Is anyone interested in selling their PLI books and software? It just doesn’t make any sense to go through the whole course… and I think the books will do the job.
Omni Learning Corporation, the publisher of OmniPrep Patent Bar Review Course, strongly disagrees with this negative comment about our course. Our goal is to produce the highest quality patent bar course to ensure that our students achieve success on their USPTO exam. Because we are confident about the quality of our course, OmniPrep offers the best money back guarantee in the industry. Since our students’ success is our priority, we are extremely diligent about addressing all student questions and concerns. Given that 98% of our students pass the patent bar exam, we question whether this comment is real, or more likely, a false statement posted by a competitor. If this is a real complaint we ask the poster to please contact our Administration Department at: admin (AT) omnipreppatent (DOT) com, so that we can resolve the problem.
Thank you.
Administration Team
OmniPrep Patent Bar Review Course
Omni Learning Corporation
Dear Dan,
Sorry to hear that. How did you study for the exam? were you an expert searcher with the MPEP? How many hours did you study?
What do you mean the fail rate is less than 5%?
Sam
Sam,
I took an online course with omniprep… not good at all. I am expert on searching MPEP… I did about 2 hours 5 times a week for about 5 months… and failed it the first time. In my opinion, the prep material was not good, and I had no direction on what I need to know for the exam.
Then, I studied for two months about 5-6 hours every day. I master all 2000 to 2003 questions – 5% fail rate. And with all this I was expecting a 80% pass rate, but I got only 66%.
Time, effort and prep material is not enough if you don’t get the right stuff to study from. This website has a lot of confusing material. It tells you what the new questions where encountered, but many explanations are very confusing and not helpful to prepare for the actual exam.
Dan
Omni Learning Corporation, the publisher of OmniPrep Patent Bar Review Course, strongly disagrees with the above comment. Our mission is to produce the highest quality patent bar course to ensure that our students achieve success on their USPTO exam. Because we are confident about the quality of our course, OmniPrep offers the best money back guarantee in the industry. Since our students’ success is our priority, we are extremely diligent about addressing all student questions and concerns. Given that 98% of our students pass the patent bar exam, we question whether these comments are real complaints, or more likely, false statements posted by a competitor. If these are real complaints, or if you have any questions regarding our course, please contact our Administration Department at: admin (AT) omnipreppatent (DOT) com.
Thank you.
Administration Team
OmniPrep Patent Bar Review Course
Omni Learning Corporation
Dan,
I had the same experience just today. Used this website, OmniPrep, and failed with a 66%. I only missed 1-2 questions on each of the old exams while I was taking them. I definitely focused on the wrong stuff. So for all you people over-working on the old exams, take notice: the test is VERY VERY heavy on PCT, appeals, and 102/103. The old exams don’t test this enough, nor does info on this site (though it’s helpful overall).
Contrary to others, I only had a total of 4 repeaters: Laurel, Abbott, Hardy; DRAM cell (though it was changed up somewhat); 45 day non-publication when filing Japan PCT patent; and the more recent repeater about lip gloss. NOT worth worrying about repeaters… focus on the info!
Other than that, ALL my questions were new. I don’t know if this is becoming a common theme, or whether I got really unlucky.
Just for reference I studied for 3-4 months, about 45hrs/week.
I had plenty of time to look things up in the MPEP, but it doesn’t seem to work for some questions (hard to explain why). I was quick with the searching (looked up 30 of 50 in the AM w/time to spare), and would consider myself “expert” in my ability to search.
Don’t know if I will retake it… not sure where I am going so wrong…
-Sad in CA
Dear MyPatentBar.com Readers,
Omni Learning Corporation, the publisher of OmniPrep Patent Bar Review Course, strongly disagrees with the negative comments about our course posted on this message board. Our mission is to produce the highest quality patent bar course to ensure that our students achieve success on their USPTO exam. Because we are confident about the quality of our course, OmniPrep offers the best money back guarantee in the industry. Since our students’ success is our priority, we are extremely diligent about addressing all student questions and concerns. Given that 98% of our students pass the patent bar exam, we question whether these comments are real complaints, or more likely, false statements posted by a competitor. If these are real complaints, or if you have any questions regarding our course, please contact our Administration Department at: admin (AT) omnipreppatent (DOT) com.
Thank you.
Administration Team
OmniPrep Patent Bar Review Course
Omni Learning Corporation
Dear Sad in CA,
I am sorry to hear that. I am actually studying for the exam as you and Dan did; except I have an old PLI home study course. I am reviewing all old exams (twice), reviewing outlines of the PLI course I made and just reviewing wrong questions over and over. Please advise what I should do differently.
I am a little surprised you had so little repeats. Everyone else who posted seemed to get up to 60 percent repeats. It could be that you u got unlucky with a very hard version.
Do you happen to remember what sort of appeal and PCT questions you encountered? Were they very obscure?? Thanks
Anne
Anne,
I had about 5 additonal repeats, but they were completely changed repeats (the mirror, but a different question & answer; the 20%A20%B60%C/D but a different question & answer; etc). Oh, also had the repeater about the 147 total claims, but they changed the numbers up, so 147 wasn’t an option. So I would DEFINITELY caution against looking quickly at the question & thinking you know the answer. Often they have changed the question entirely. Or at the very least moved the answers around.
I would personally say that you really need to know the ins & outs of the sections 700/2100, the appeals/reissue/reexam, and the PCT (in particular foreign priority!). Everything else you can just look up–the search feature, contrary to what a lot of people say, is fairly simple to use. You click into the chapter you want (they list the chapters & titles), and search right in the chapter. Occationally it’s hard to find the right answer, but 70% of the time, it’s within a 3 min search window or so.
The questions I had on the PCT were mostly questions that gave you a series of dates (filed in Japan on X, filed a PCT app on Y without declaring priority of the Japan app, filed US stage on Z, what date is the prior art date?) and asked you questions about the dates. VERY little else re: PCT. But know about nat’l filing stage, etc. I didn’t have any of the repeaters about Costa Rica, Sweden, etc.
Sorry if that isn’t clear… my mind is still a bit jumbled. Look to the 2003 exam–I am sure there was a question about foreign apps & prior art dates. There’s also a nifty table in the MPEP in the PCT chapter (1800-208?) that has the information (which is only helpful if the question is on point).
For appeals, know pretty much everything & every type of appeal: who can do it, when, how the different processes work together or seperate, what happens post-appeal (depending on what the Bd says), etc. I spent a good bit of time in 1200, 1400, 2300.
Re: 700/2100, I would caution against going nuts on these. Just know the basics of 102/103 & you can look the quirky stuff up. I did have 2 questions on combination/subcombination (never had looked at it as far as I could quickly remember), 2 on enabling references, and oath/declarations.
What else… oh, had 2 on design patents (1 int’l –but not the Spain repeater, 1 U.S.); 2 on express mail; and, surprisingly, a good 10 on assignees & their rights (300/400/etc); know ink colors (didn’t have the repeater on ink, but did have one); correction of inventorship; duty to disclose/fraud/inequitable conduct in a re-issue or re-exam (had to look that one up).
Had nothing on: ISRs, inventor’s death, protest, mutiple dependent claims, drawings, double patenting, fees of any sort, provisional v. nonprovisional apps,
Had only 5-10 “scenario” questions total– the rest were (A/B/C/D/none of the above/all of the above; I only/I, II/I and III only) types.
The thing you definitely need to know is the interaction between the chapters. Most of the time, your answer comes from 2 different chapters, so you need to know where to go look.
I just found that a LOT of my questions were really bizarre. The guy next to me had a completely different test (we spoke after) & didn’t have nearly as many questions on the PCT or appeals chapters, but was much heavier on the repeaters (he didn’t pass by a point).
I would say my mistake was not knowing the ins & outs of a lot of the sections (PCT!) better. It’s easy to find the easy answers in the MPEP, but it’s nearly impossible to find some of the quirkier, more “nuanced” answers. So for next time I will probably look at a lot more of the subtle things in the chapters. For instance, “you can broaden a re-issue w/i the 2yr period” helps NOT at all–of course you can, that’s simple, everyone can find that in the MPEP. But can you figure out exactly when a claim is broadened, or what happens if you want to do a divisional app in the reissue to split the invention in 2 so that you can have your part all to yourself? It’s that sort of “second level” thought that I think really helps connect sections & concepts together and would probably make the exam easier.
I am going to stop writing now, but let me know if you have more questions… I would be happy to answer them.
Re: Logistics of Testing Center
On a testing center note, they were CRAZY! The people who mentioned you couldn’t take anything in w/you were on the money… can’t take ANYTHING. The tutorial lasts up to 15 min. You click through the screens, then it gives you a “click here when ready to start” screen. I had a good 13.5min to do whatever I wanted before I had to start. The break lasts UP TO an hr–the computer times your break–so don’t be late back. And it starts right in w/no warm up. The computer lets you “mark” a question if you either skip it or you mark an answer but want to come back to it. You can go “next” or “previous” to move between any of the 50 questions in the section. At the end, it will give you a button so you can look at all your “marked” questions & take the time to go hunt down the answers. Whether or not they are “marked”, once you finally submit the questions the computer ign. the “marked” designation… but it is helpful for you to flag questions. I had no issue w/reading the screen–it was a flat screen, crystal clear. The questions were in size 12-14 font, so plenty large. The Adobe they used was a MODIFIED old Adobe Acrobat Reader–so it didn’t even have all the features of normal adobe acrobat–but no worries–you wouldn’t use them anyway. The computer keeps the time remaining in the top right, so you never actually have to go look for it (good thing since they don’t let you have a watch). I echo what someone else said about others in the testing room–there were 3-4 other types of exams that day & they definitely were distracting a bit.
A big thank you to all of you who posted here. I took the exam today and passed.
I reckon about 25-30% Qs are repeat questions. More focus is on exams from Winter 2001 onwards.
Repeat Questions- Tribell, Moondust, Mirror (reflective-perpendicular /||, Costa Rica(nationality) filing in US-what is filing date. If claim missed out in international app. how to respond to notice of missing parts). Appeal Questions-what happens to claims if Appeal is withdrawn-no brief is filed. I guess they asked the same question three times differently. Fill in the blanks, claim status. etc. Powers of the board to remand -additional requirements that the board can ask the examiner to do. Chapter 7 flowchart-references-two questions.
Two-three questions protest. How filed. when filed. -hypo-competitor has got patent issued with claims similar to your clients patent. what can not be done.
There was a question on combination/sub-combination-look up chapter 800. Standard Q from chapter 100/200-access to parts. If you are given application number(not published yet), and you call up FIU whether they will respond to you or not. If attorney is assigned part of patent-whether need permission from LRs. One Q about Tech. Center Director for deciding issue of restriction requirement.
Multiple Questions on Appeal. Protest-2-3. What happens if you pay issue fee and you receive new art – withdrawal from issue. etc.
If I could point three most important chapters-Appendix R, 700 and 2100.
Thanks once again.
I took and passed the exam yesterday. I feel that I was well prepared, and it seemed easier than previous exams. The fact patterns were shorter, so it was quicker. I did not have a ton of repeats, but the questions were not too different from past tests. I had no PCT questions in the AM and only a handfull in the PM. I’d say the section with the most questions would be Appeal, then reissue.
Time to payback the brain trust. Let me know if there are any specific questions you have.
Questions that I remember include:
Parking Meter- Same as past exam
Hydrocyclone – Same as past exam
DRAM- Same as past exam
Moondust – Same as past exam
Tribell- Same as past exam
Cancer/Alleviating pain – Same as past exam
150deg/300deg – Same as past exam
Jon–>John- Same question, different answers, in this one an ADS is filed.
Tin Foil Airplane – same as has been posted. The answer is to maintain rejection (same as the bricks with pine/balsa wood)
Lip Balm- same as has been posted, public use bar because she used it after testing was complete
Potter- same as past exam. No matter how many times I did this question in practice, I screwed it up, so I just picked the same answer
Ti Baseball- Similar to what has been mentioned. I am pretty sure that the correct answer is the day that it is indexed and catalogued. The fact pattern seemed to be slightly different than what has been posted, but it related to a brochure (not the ball itself) in the museum.
ABCDE- same as past exam, okay to broaden even though original request was to narrow, since broadening occurred on the 2 year date.
Japanese nonpublication request- Similar to past exam, I think that they tweaked the answers such that only one was correct this time.
Mexicans and Americans File in US – No good because it was in Spanish
Japanese application – In Japanese, transmitted to the IB after payment of the issue fee. There was a similar choice (wrong) that said transmit to the Japanese Bureau
Multiplicity – (2 pice Broom) Call practitioner, get election, reject all claims, review the ones that were agreed upon (verbatim from the MPEP)
Assignee not of record – What can he sign? I chose that he could sign a request for status of an application, as anyone can do that. The other choices were terminal disclaimers, small entity status, amendments. The only other one that may be okay is SE status, but I read the CFR as stating that they needed to be of record.
5.5% Ni 8% Mo question – What’s best argument to overcome rejection when your application covers range 4 – 7% Ni & 6 – 11 % Mo and you disclose best mode at 6% & 9%? Answer is to amend claim to be 9%Mo, since it would not be anticipated any more.
Linking claim- after election, the linking claim is examined with the elected claims (verbatim from the MPEP)
Tables on CD ROM- 52 tables 1/2page each. There was only one acceptable answer, I’m pretty sure that it was do not submit on CD. But all of the CD choices were
wrong, because they were not submitted in duplicate and there was another wrong choice about a magnetic tape or something.
Small Entity- Similar to past exam, SE was claimed, but license was sold prior to application. Must submit the difference and a statement.
Maintenance Fee- What to do if it was not recorded. (from the MPEP) but basically, you need to show that you paid it before the expiration, and you protest, and if you win you get your $ back.
Fraud- Examiner can use knowledge not in the reissue record of a court decision to reject for deceptive intent
Address Change – for only one of 4 inventors address changes, only they need to submit a new form, but they need to name the other inventors
Public inspection – Assignment records are either all open or all closed, can’t be open for one patent and closed for an unpublished application
Death of inventor – A few of them, cant remember exactly, but they were pretty straight forward (remember that the employer could not prosecute, because they were not an assignee)
Fax- what can you fax, right from 37 CFR
Claiming Priority – 1st sentence of spec, ADS, etc right from the MPEP
Piecemeal – Right from the MPEP
Trade Secret – From the MPEP. Which is correct question? When stuff is expunged, etc. The only “right” answer didn’t seem great, it basically said that if the material is not material to patentability it will remain in the sealed envelope in the file. But the other 4 were not right. One seemed like it should be right, but isn’t, material favorable to patentability should not be submitted (724.03).
102(d)- This was the only question that I had a “hard time” with. Fact pattern supported a 102(d) rejection. Not enough info for 102(b). If the examiner can make a 102(d) rejection should they also make a 102(a) rejection. I said only 102(d), as it is a statutory bar, but I could not find support for this in the MPEP.
102(e)- only a couple. Remember that priority from a PCT to a “foreign application” does not allow the foreign app to become a 102(e) date. Just follow the charts in 700.
Graham inquiries – Same as past exam.
PCT- If only the US is designated the US will not publish at 18monts, but when the application enters the national stage. This is an exception right in the MPEP
Priority- Can’t remember exactly, something like can priority be added after issue. Found the answer in the MPEP.
Search – First search (904)
Court decision- If a court finds a patent not invalid (double negative) examiner can still find reasons to reject (it is not binding)
Appeal – A few, including rehearings, I read the section during the exam. There were also a few new ground of rejection from the board. One on late filing of Brief 4mos,
attorney would have to revive a terminated… Claim 1 rejected, claims 2-6 objected to because of 1, claims 7-10 okay, examiner can rewrite in independent form or allow applicant to.
Remand from board – same as past exam, even though its not really correct (answer was to make examiner consider an affidavit)
Design patent – know that you have only 6 months to claim priority.
Best Mode – Is part of 112 1st paragraph (enablement)
3rd party submission
Chemical Claim – Same as the one referenced on this site. Examiner rejects because there is no description as to how its made. Response is that it was common in the
art. There is a whole section on this in the MPEP, had to read it during the exam.
Multi-dependent claim
Transparent layer adhesive question- Fact pattern was the same, but the choices were all different. Need to figure out what is an acceptable claim, was really a trasitional phrases question (comprising/consisting of)
I took the exam just a few days ago and passed. Though it was my THIRD time taking the exam. The first time I failed, I thought I could just go in there and pass just knowing the stuff I learned in my Patent Law class. BAD IDEA. I failed, barely getting more than half right. The second time, I used the PLI course materials, and they were good, but was kinda hit by surprise with all the Appeal and PCT questions. I failed with a 65. I did only 1 practice test and that definitely cost me.
The third time I took it, I used Bullseye’s outline (about 120 pages or so) to refresh everything (I failed in October 2008, and didn’t start up again until March 2009). I basically used the Bullseye schedule (but I sped it up since I was studying 7-8 hours a day) and I found the Bullseye material easier to digest than PLI’s, and the PCT coverage was a lot better.
I followed this review with the 4 practice tests from 2002-2003. I did 50 questions a day instead of the 100, so I could review the test and not be overwhelmed. I scored around the 70-80 consistently. I reviewed every question to make sure I knew why I got questions right and why I got questions wrong. Then I would skim the Bullseye outline again and look through my notes from the outline. Then I took the 4 tests again, marking all the questions I still wasn’t ABSOLUTELY confident with. I was answering a lot faster since I was repeating the tests, so I did 100 questions a day this time and reviewed all the marked questions. By this time, I was hitting the 90s consistently. Then I then went through all the exam questions posted on this site just to cover any new questions I can find. and I finally passed. On the test itself, there were probably 20 repeats and so the saved time was definitely helpful.
I’m sure there are probably better approaches out there, but that was mine and I thought maybe someone out there might be curious. I failed twice before I finally passed, so if anyone is feeling discouraged, keep going! with practice, your score can only go up.
Hi Johnson,
Congratulations on passing the Exam! Are you planning to sell your bullseye and PLI materials? I am looking for used review materials. Please let me know if you are interested in selling yours.
Thanks.
Hey Ashwini, I’m interested in selling my materials, but they’re still kinda all over the place because I started studying for a state bar exam right after the patent bar so i never got around to putting all the materials back together again. I was planning on putting them on craigslist or ebay within the next week or so.
email me at solaris1123 (ats) gmail (dots) com and I can send you a link to the ebay/craigslist page once i put it up. i have the PLI materials (though i think they’re a 2004 version), the current Bullseye Outline (marked up by me), and some Patbar.com materials that I never used (but some of it was marked by the previous owner).
Hi CW,
Congratulation on your pass!!!
I have a question about the “Assignee not of record” you mentioned.” What can he sign? I chose that he could sign a request for status of an application, as anyone can do that. The other choices were terminal disclaimers, small entity status, amendments. The only other one that may be okay is SE status, but I read the CFR as stating that they needed to be of record.”
However based on the discussion on this board, http://mypatentbar.com/2008/08/18/q-assignment/
It seems that the small entity status should be the right answer.
Would you mind elaborate on this?
Thank.
Yeah I know that was the discussion, but I don’t buy it. The question said assignee not of record and not making themselves of record with the request (they didn’t use concurrently, but something like that).
Anyone can request status of an application (not that they will get it).
However, if you look at small entity requirements, 37 CFR 1.27 (c)(2), it provides for (i) attorney/agent of record (ii) inventor (iii) assignee of entire interest. The key is that the assignee section links to 37 CFR 3.73(b), and if you read that section it is clear that an assignee needs to establish its ownership to the satisfaction of the Director…
That’s a long way of saying that the others on the board are wrong and I’m right
Another note in general, just because its blogged, does not make it correct. If you can’t reconcile conflicting advice, don’t blindly answer a question. A good example is the Ti Baseball. Unless there are multiple versions (as has been reported), that question is as clear as day, and there is all sorts of conflicting advice.
good luck, let me know if you have any other questions
Dear CW Cindy,
Are you sure about the SES vs. status of app? Look at 509.03 II which says
“An assignee asserting small entity status is not
required to submit a 37 CFR 3.73(b) certification
whether the assignee is a partial assignee or an
assignee of the entire right, title, and interest, (but see
paragraph III. below).”
also,
section 102 says to get access, it must be assignee of record
“If the application has not
been published, but is pending or abandoned then the
FIU should determine whether the requester is:
(A) an inventor;
(B) an attorney or agent of record in the application;
(C) an assignee of record in the application; or
(D) a person with written authority from (A), (B),
or (C).
….”
CW,
What was the answer to the Ti ball. I have been so confused with the posts on this site
The fact pattern in my question was very clear. It was not concerned with the ball per se, just the brochure describing it. It was given to the museum, shelved, there was advertising for the museum (but not directed at the brochure) , wealthy patrons came, and finally it was cataloged and indexed. This is the day that it becomes prior art, and it was July 4 (that’s not to say that it will change). This corresponds with the MPEP that says a thesis that nobody can find is not prior art, but if its indexed and cataloged, then it is…
Hi Johnson,
Congrats on passing!
You mentioned that you did not pass the 2nd time because you got a 65.
I was under the assumption that in order to pass, you need to get 70% out of the 90 questions that count, or 63 correct answers (because 10 questions are “beta questions” that don’t count). So I’m thinking that you should have passed with a 65. What am I missing?
Thanks,
Mark
hey mark,
you’re right, you need 70% to pass or 63 (of 90). I don’t remember if that 65 was a % or a straight score, but it had to have been a % (or a third attempt wouldn’t have been necessary!). so im pretty sure that score you get at the end of the exam is a %. hopefully, if and when you take the exam, you’ll never have to see that %
next time i’ll throw in the % to avoid any confusion.
thanks. So I guess that 63 is the magic number.
Question related to 35 USC 102(e)(1) and (2) prior art dates.
Applicant files a patent application in Japan on February 28, 1996. Applicant files a PCT international application designating the US on February 27, 1997, based on the Japanese application. The international application is published in English on August 28, 1997. The international application enters the national stage in the US on August 28, 1998. The USPTO publishes the application on June 7, 2001 at the request of the applicant. The application issues as a US patent on December 4, 2001.
For the US patent, what is the patent’s earliest date, for prior art purposes as a patent, in view of the amendment to 35 USC 102(e) by the American Inventors Protection Act of 1999?
A February 28, 1996
B February 27, 1997
C August 28, 1997
D August 28, 1998
E December 4, 2001
It is my understanding that since the patent resulted from an IA filed prior to 11/29/00, it may not reach back to obtain the IA’s filing date. Instead, we must revert back to the pre-AIPA form of 35 USC 102(e) which states that the 102(e) prior art date is when the patent application complied with 35 USC 371, i.e. the National Stage entry date. This seems to be in accordance with example 6 in MPEP 606.02(f)(1). However, the PTO says that the correct answer is E! Heck, E isn’t even the correct 102(a) or (b) prior art dates!
There is a follow up question with the same fact pattern that reads:
When examining an application filed on or after November 29, 2000 or any application that has been voluntarily published, what is its earliest possible prior art date, for the June 7th US published application in view of 35 USC 102(e) as amended by the American Inventors Protection Act of 1999?
A February 28, 1996
B February 27, 1997
C August 28, 1997
D August 28, 1998
E June 7, 2001
Firstly, the filing date of the application under examination is irrelevant under the amended form of 35 USC 102(e). The June 7th US published application resulted from the IA application that was filed prior to 11/27/00. Thus, according to the MPEP, there is no 102(e)(1) prior art date! Obviously this is not the correct answer, but I don’t understand why.
Somebody help!!
If these are the questions on a past exam (cant recall correctly now). but the answers are now D and D. The law changed and the past exam answer key is incorrect.
So trick. To understand why e is the answer, pay attention yo the question what is the prior art date for the patent not the lateens app publication so the answer is the issuance date as 102a or b date. No real 102e date. Similarly your following question is asking about the app publication so it’s publication date as 102ab date
ASH – Couldn’t reply to your post, hopefully you see this. I do understand your question.
Two things (1) anybody can request the status of an application. That does not mean that the USPTO will provide it. As such, an assignee not of record could sign a request for status, but the USPTO would not grant the request, because they aren’t the inventor, attorney or assignee of record. (2) If you read paragraph III in the text you provided me, it will refer you to 37 CFR 1.33 which in turn points you to 3.71(b) which says
“(1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined.
A partial assignee is any assignee of record having
less than the entire right, title and interest in the application or patent being reexamined.
So, would I stake the life of my child on my answer, no, but I’m pretty sure that I’m correct (90+%). SE status is pretty clear that you need to be of record, and the status of an application is a bit more gray, so I think that its one of those where it is the most correct answer.
Just note, I could be wrong above, so please read the MPEP and come to your own conclusion.
The issue comes down to this. Is the question wanting you to take the leap that the assignee not of record is signing it, but someone of record is filing it (doesn’t make sense – if someone of record is filing it, they would also sign it). Or is it wanting you to assume that anyone can request the status, even if its not going to be provided (obfuscation). Maybe its a beta question, who knows.
Dear CW,
Thanks for your honest answer. I am a little confused as well. Does anyone else have any input.
Do you recall which exam these are from? I got them from the Patent Education Series PatEngine Simulator (which was a total waste of money by the way).
I understand why the first answer is D, because it is the date that the application entered the national stage. However, I don’t understand why the printed publication would have any 102(e)(1) prior art date at all in the second question. Instead, its 102(a) and (b) date would be the date of publication. If the IA was filed on or after 11/29/00, then the printed publication could reach back so that it’s 102(e)(1) date is when the IA was filed…but this is clearly not the case.
April 2002 AM, questions 11&12.
If you follow the flow charts on 700-40 you would get D for the 1st one. On the second one, it also has a 102(a) and (b) date, but take a look at the Example 9 on 700-38 for the 102(e) date, its pretty much the same scenario.
CW-
Thanks for finding those questions in the past exam. However, I disagree with you on your use of the flow chart on Pg. 700-40 for #11. Box 1: the reference is a US application publication of an IA after National Stage entry. Therefore, we go to Box #2 on the left: While the application under examination was filed on or after Nov. 29, 2000, the IA application was filed on Feb. 27, 1997. Recall that the date of the application under examination is irrelevant, and all that matters is that the reference (the June publication) is based on an IA filed PRIOR to Nov. 29, 2000 (see MPEP 706.02(a)(I) B, pg. 25). Thus, the answer to Box 2 is “no”, and we go to Box 3 on the right: “For a US appl. publication: no 102(e) date”. How do you get answer choice D (which by the way is incorrect according to the PTO. They say the correct answer is B. I don’t even understand why that is correct)?
Also, Ex. 9 is based on a continuation application of an IA. Isn’t Ex. 6 more appropriate? Either way, they both give you the wrong answer!!! I’m rather confused on this matter.
B was correct based upon the MPEP that was tested for the Apr2002 test. You can go back and download that one if you’d like, and you would see why their answer is correct “for the time” but not for now.
You are stuck on the 102(e) date of the IA, which is none. There is not enough information to know how it entered the national stage, but if you had to choose one of those dates, which would you choose? If none was a choice, I’d pick that one too. A+B+C are wrong. E is the date of the patent, so I pick D as the most correct… If you choose no to box 1 you will get to choice D.
BUT, this is kind of a BS discussion. There will not be questions like this on the exam. The questions have been updated for the current law, so you should be able to use the flow charts properly…
There are quite a few questions where the answers are not really correct anymore due to law changes, so whenever it looked funny, I pulled up the old MPEP and usually had it figured out in a few seconds…
CW-
You also mentioned that the law changed and therefore the correct answers are both D (I still contend that the flow chart does not support that answer for the publication). The question specifically makes reference to the American Inventors Protection Act of 1999. Are you referring to the further amended form of 102(e) stemming from the Intellectual Property and High Technology Technical Amendments Act of 2002?
That might solve the mystery as to why the PTO’s answers are clearly wrong. However, it still seems to me that the publication does not have a 102(e) date.
Yes, and see above.
Scruff,
DO you know the answer to the question discussed above about:
Assignee not of record can sign: small entity status or request for status of an app
Sam-
As I understand it, anyone can request the status of an application and is entitled to such information if that person is:
– an inventor
– an attorney or agent of record in the application
-an assignee of record in the application
-a person with written authority from any of those persons named above
However, if the person is NOT one of the above, then he/she may still be entitled to such information if
-the application is identified in a published patent document
-the application claims the benefit of the filing date of an application that is identified in a published patent document.
(MPEP 102 and 37 CFR 1.14(2)).
Thus, it seems that an assignee not of record can request status of an app (as may anyone) and may be entitled to such if the app meets the conditions set forth in this section.
As for small entity status, all parties under 37 CFR 1.33(b) may assert entitlement to SES by writing. 1.33(b) includes an assignee provided for under 3.71, and 3.71 states that the single and partial assignees must be of record. It’s a round about way of getting to the answer but I would concur that assignees not of record may not assert entitlement to SES.
Lastly, it’s interesting to note that MPEP 509.03 III states that “while a partial assignee may sign a written assertion [for small entity status], the written assertion must be filed by an appropriate party under 37 CFR 1.33(b).”
I think this is in accordance with what CW said.
Hi, I am taking past exams to study for the Patent Bar. Does anyone remember that the April 2000 PM exam had a lot of “fringe” topic questions? For example, from MPEP chapters regarding ownership, assignment, receipt, interferences (not that fringey, but still). This exam doesn’t have the usual issues people study for – applications, examinations, and patentability. I wonder whether this exam was particularly difficult when it was given nine years ago. Just wondering…
CW-
I agree that we must answer the question using the most current version of the MPEP (I did not realize that the previous question relied on the form of 35 USC 102(e) before the Intellectual Property and High Technology Technical Amendments Act of 2002.).
Of course, we are using obsolete answer choices to try and answer the question in light of the new laws. Since “no date” is not an option, I guess the only one that makes sense is D, as you stated.
However, I disagree with you about your logic. It seems to me that we know exactly when the application reached the national stage: August 28, 1998, as stated in the fact pattern. The June 7th 2001 publication is clearly after national stage entry. Thus, the answer to box 1 in the flowchart must be “yes”. How can it be “no”?
The only open issue is that it does not mention 371. If it said entered the national stage via 371, then I would agree with you 100%.
Again, we’re going back and forth on how a question would apply with different law, so its a moot point.
A piece of advice, if you get a question wrong, and you think that it may be right, go back to the MPEP version that was used for the test. You will find more cases where the law has changed, or the MPEP has been changed, thus making the question “not great”.
Another example is a past exam question (Apr 03 AM #25) that asked in which case can the BPAI NOT send back to the primary examiner. The answer that they are looking for is to consider an affidavit. Well, that is a valid reason now. So the first time I went through the question, I picked A, because it seemed too “soft” (best answer). Anyway, if you go back to the version of the MPEP for the test, the text of answer A is verbatim in the MPEP, so if I was using that MPEP, I would have gotten the question right. FWIW, I got that question with all of the same choices on my real exam, so it has not been updated.
You need NOT memorize the examples of 102(e) dates in Chapter 700. Just learn to use the flowcharts.
You will come up with the correct answer every time -no matter how screwed the fact pattern is.
All you need to memorize is the main TOC of the MPEP-that is just the chapter names.
amen to that…
Is anyone interested in selling the PLI books and CD’s? I can offer $500.
Cheers,
Dan
The procedures in the MPEP do not require an applicant claiming foreign priority in nonprovisional utility application to:
A) Submit the processing fee set forth in 37 CFR 1.17(i) if the claim for priority or submission of the ceritfied copy of the priority document is made after payment of the issue fee and before the patent is granted.
B) Identify the foreign application for which priority is being claimed as well as any foreign application for the same subject matter having a filing date before that of the application for which priority is being claimed.
C) File the claim in the application
D) Have the same inventive entity listed in the foreign application as in the US application in which the priority claim has been filed.
E) Identify the intellectual property authority or country in or for which the foreign application was filed.
PTO says D is the correct choice. However, C is clearly not required, since the claim must be filed during the pendency of the 2nd application, and the later of 4 months after the 2nd application or 16 months after the first. Thus, I think C is the correct answer. Also, the MPEP says that the applicant must be the same for both applications. Does this imply that the inventive entities are the same?
Is this a case of an outdated question?
RE Prometric Format
Is the second half of the exam numbered 51-100 or 1-50?
Can I hang out by the computer during by lunch break and write on my scratch paper or access the MPEP?
ms,
When my time ran out on the morning section a one hour clock started counting down for my lunch break. As far as I know I could have stayed in my seat and stared at the screen if I had wanted to. I went out to my car, had a quick bite, and came back to start the second section after about 20 minutes. I can’t remember if the afternoon was numbered 51 to 100.
I’m fairly sure that the 2nd half was numbered 51 to 100. (maybe 95% sure, but I would not bet the farm on that).
The second half is numbered 1-50. I remember I had written out 1-50 then 51-100 at the beginning and being messed up by it for the second half.
Thanks Bobby. I’m glad I did not bet the farm! I also wrote out 1-50 and 51-100 before the test, so maybe that’s why I incorrectly thought the second half was numbered 51-100?
Has anyone taken the exam recently?
Dear All,
Has anyone taken the exam recently and willing to share experience/questions seen? I am taking the exam in a few days and would appreciate any feedback. Thanks
A few questions…
1) 35 USC 102(a) bars an applicant from obtaining a patent that was known about or used by others in the US, or described in a printed publication anywhere in the world, before the DATE OF THE INVENTION. This means that the filing date of the application is irrelevant. Is this correct? It seems as though the PTO only addresses the filing date in 102(a) questions, and not the date of conception.
2) As I understand it, “constructive reduction to practice” describes the fact that the applicant has successfully satisfied the written description and enablement requirement. In this sense, the applicant knows how to make and use the invention, and how to successfully enable others to do so, but has not actually reduced the invention to practice, i.e., there is no prototype. While an actual reduction to practice is sufficient for satisfying these requirements, it is not necessary. Or perhaps an actual reduction to practice is not needed to obtain a filing date, but IS needed to obtain the patent? Can anyone clarify?
3) Is it true that all 102(e) references are also 102(a) references (though not all 102(a) references are 102(e) references because 102(a) references may include printed publications that are not patents or patent applications/publications)?
1 more question: Adobe Reader 5.1 (and all subsequent versions) display the title of each section next to the section number under the bookmark tab in the column on the left side. Does Prometric’s actual electronic version of the MPEP have the same labels or is it just section numbers, i.e., “2100” instead of “2100: Patentability” or “Appendix R” instead of “Appendix R: Patent Rules”?
I took the test yesterday and passed. The morning portion of the test was harder than the older exam here to me, may be simply because I am familiar with the test questions here, I thought the afternoon one could be easier, but there is a lot of more surprises in the afternoon. I completed the question in about 2 hours and had one hour to check the ones I marked, I had a lot of marked ones in the afternoon than in the morning, they are the ones with answer I was either not completely sure or simply do not know at all. I did not have enough time to go though the marked ones in the afternoon test before the timer ended, that was how bad it was, the thought about failure was dreadful when I started the afternoon test and had to mark a lot of questions. This is my first try, I am so glad, do not really like to feel to put more time to study this thing anymore.
The site benefited me before I took the test, so I would like to contribute things I remembered. Will not repeat any that had been mentioned before. The repeat question may be around 15%, many questions were asking to find the ones that is the “except”. Following are some thing I can remember( could not remember the exact question):
1. MPEP 2257, listing of prior art in patent, (except)
2. Document needed in assignment (except)
3. Examiner’s action after appeal and application requested rehearing
4. Amendment with new argument can be entered after appeal brief . ( I chose the one the related to court decision that just came out)
5. The Board affirmed examiner’s rejection to claim 1-10, and entered new ground of rejection, application submit amendment overcome new ground of rejection and also overcome the affirmed rejection, and reopen the prosecution, what is the right action of the examiner.
6. What assignees can sign before establish the assignment record ( I chose the small entity answer)
Take the old exam are helpful, but I think spending time to really understand some of the important concept, rules and procedures are really critical.
Anyone has some suggestions to a person has no experience in patent application and prosecution but want to start?
Thanks and good luck to you!
Macie,
I am taking the test in a few days. Do you remember your answer to 5? What other questions can you remember….(even if they’ve been listed on the board). Do you have any tips for me or particular sections I should review? Thanks and good luck w/ your job hunt
Amy,
I only remember some of choices of the #5 given, (not the exactly wording)
A. Examiner allow the application
B. Examiner refuse the application
C. Return the application to the Board upon the amendment overcome the old rejection
D. Return the application to the Board upon the amendment overcome the new ground of rejection.
I chose D
Amy,
One of the question related to PCT and 102(e) prior art date has been posted before. The application is an continuation application of the PCT app, which benefits the prior art date of the provision application in USTPO. The question is asking what is the 102(e) prior art date of the continuation application.
Amy-
I think the answer to your question can be found in MPEP 1214.06 IV: 37 CFR 41.50 (b) Rejection, which states:
“If the Board affirms the examiner’s rejection, but also enters a new ground of rejection under 37 CFR 41.50(b), the subsequent procedure depends upon the action taken by the appellant with respect to the rejection.”
The section then summarizes two possible scenarios and their consequences. Also, the next section, 1214.07: Reopening of Prosecution says that if the amendment is submitted with an RCE (provided that the app is a utility/plant filed after 6/8/95), the prosecution of the application will be reopened and the amendment will be entered.
Lastly, 37 CFR 41.50(b) states that the new ground of rejection is binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision.
Regarding #4, according to MPEP 1206 I, amendments filed on or after the date of filing an appeal brief may be admitted ONLY to:
A Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or
B) rewrite dependent claims into indpt form
It doesn’t say anything about new court decisions (although, the attorney may present arguments based upon a recent relevant decision of a Federal Court when requesting a rehearing)
Any thoughts or comments? Anybody care to address my previous questions?
something in MPEP 1214 procedure following board decision. page 1007/3035: ( I put it here, which may help ?)
The new ground of rejection raised by the Board
does not reopen * prosecution except as to that subject
matter to which the new rejection was applied. If the
Board’s decision in which the rejection under 37 CFR
*>41.50(b)41.50(b)41.50(b)41.50(b)41.50(b)< rejection and may not include the
affirmed rejection. If the application does not become…..
Also, regarding #6, I believe that the Small Entity Status answer is wrong (see posts 171 and 176 above)
Thanks Scruff. The other choices are even more unlikely to be right to me, like “terminal disclaimer”, unfortunately I do not remember the others
You know, I may have interpreted that question incorrectly. Perhaps the answer choice is referring to the assignee granting access to someone else and not requesting access for themselves. In this case, the assignee must properly establish ownership, which might require a recording (I’m not sure). I know for a fact that requesting SES does not require establishing ownership. You might be right afterall. Any thoughts?
Scruff
There is a discussion above on 167 and 168. I am also very confused about this question. I have reviewed other forums and some test takers say SES vs status of app. I am not sure.
103(c) provides that one may disqualify the prior art if one can establish that the prior art is a 102(e),(f), or (g) reference, and that both patents/applications were owned by the same party at the time of invention.
This does not apply to prior art references that are 102(a) or (b) references. It seems to me that all 102(e) references are also 102(a) references, provided that they have been published or issued, because 102(a) encompasses printed publications that describe the invention before the date of invention. Thus, 103(c) cannot apply to prior art that is a US patent filed before the application under examination, because under that scenario, the patent would have been published and would become 102 (a) prior art. However, one can use 103(c) to disqualify a US patent application filed before the application under examination if it has not been published.
Is my premise about all non-published 102(e) prior art being 102(a) prior art correct?
5. The Board affirmed examiner’s rejection to claim 1-10, and entered new ground of rejection, application submit amendment overcome new ground of rejection and also overcome the affirmed rejection, and reopen the prosecution, what is the right action of the examiner.
This isn’t making sense to me. The Board affirms the rejection to claims 1-10 and entered a new ground of rejection. The applicant re-opens prosecution in front of the examiner. Enters an amendment that overcomes both the new grounds of rejection and the affirmed rejection by the Board. Since both rejections have been overcome there is no need to send the application back to the board but instead allow the application.
If I’m correct and 1214 applies
Prosecution before the examiner of the 37 CFR *>41.50(b)41.50(b)< rejection. If the application becomes allowed, the application should not be returned to the Board
Anybody in the DC area taking the patent bar soon? I’m taking it in a few weeks and I would love to get a study group going…maybe bounce some ideas and thoughts around…
102(e) references are not necessarily 102(a) references. Not published references at the time of the subject invention (i.e., effective filing date) can be 102(e) references if their US filing date or International filing date are earilier than the effective filing date of the subject invention and then are published after the subject invention.
I am sick and tired of MPEP by now but I feel it is my turn to make a little contribution to this site and its previous contributors from which/whom I have benefited greatly. So here it is:
Rule #1 KEEP CALM AND CARRY ON
Although I had only 3 hour sleep the night before, I was confident when I sat at a computer of a test center, and then questions started popping up which were not quite like in the old exams (2003-2000) I had been drilling on, and they were new, very detailed and ambiguous), and I began to panic a bit after 5 or 8 questions. But I managed to calm down by breathing deeply a few times, and forcing myself to carry on. Repeats showed up and confidence regained. I finished first session in about 1 hour and 15 minutes, which left me a plenty of time to look up 10 marked questions. After that, I even had time to double check all 50 questions and corrected two those “except” mistakes. I was sure I got 45 (+ – 3) right.
When I thought I’d have an easy pass, the 2nd session hit me with unexpected, much tougher questions. It took me about 2 hours to answer all 50 with about 20 questions marked. Some of them I had no clue as where to start looking. But I didn’t allow them to annoy me. Eventually I did look up all marked questions, but not as thoroughly as I would like. I clicked on the end button and did the survey. It’s done.
The point is DON’T PANIC. You will have ups and downs like in life, but it is a relatively balanced test, if you keep calm and stay focused, you should be fine.
Rule #2 YOU LIVE OR DIE ON WHAT YOU’VE MEMORIZED AND YOUR ABILITY TO SEARCH
I used an old version of Longacre’s course to study. Longacre stressed on the first part of this rule. I had followed his strategy through my preparation. Three weeks before the test I was frustrated because I was not able to memorize many details recommended by Jim, even with the aid of flash cards, outlines and audio. I realized it was impossible to remember every tree or path in this MPEP jungle, you have to reply on a map. So I began to focus on how to search and to know the structure of MPEP. It paid off.
Before they computerized the test, Jim’s strategy makes sense. The questions were long then and you would not have much time left to look up MPEP. Now that’s no longer true. Today’s questions are shorter to fit computer screen but more detailed oriented and trickier. It seems that they have shifted a bit towards testing your capability of searching and finding right stuff in MPEP.
So you must not only understand and memorize the core concepts, but you must also be familiar with the structure of MPEP and know how to quickly search it.
Rule #3 FOCUS ON ALREADY TESTED QUESTIONS
Everyone has different ways to study. I got bored easily trying to read MPEP, even those important chapters such as 700, 2100, 1200, 1400, 1800, 2200. They are long and boring. So I ended up reading through not a single chapter at all. I just read a MPEP outline I got from a friend who got from her examiner friend who did her certification exam a yr ago. But I first read An Introduction Patent Law by Mueller to understand patent basics and then Longacre’s to learn MPEP basics. After that I mainly focused on old exam questions and newly reported questions to tight up the core MPEP concepts. Questions make you better understand the concepts and gain confidence for real exam.
Focus on repeats and newly reported questions. But don’t just read through or rely on the tested questions reported in this website. Reporters may not remember right under stress or may not understand it completely, causing more confusion. Only use them as a starting point to expand your knowledge and really understand the concepts tested. For old exam questions, focus on the right answers but more importantly on the wrong ones. If you use adobe 5 to search while studying those questions, that’s even better. You should make your own outline based on these activities. do a daily timed practice.
I guarantee that you will pass the test by following these three rules.
Now let me address what materials to use for study. If money is not an issue, buy most recent courses such as Longacre or PLI, or whatever, or register for live reviews. The older version of Longacre I used didn’t reflect recent shifts of today’s exam, but Jim is great at explaining basic concepts and I truly enjoyed his lecture.
I also think it is totally feasible to pass the patent bar without paying a penny (other than application fee and prometric test fee). This can be achieved by use the well-written outline here on this website and focusing on tested questions, searching MPEP, and practicing old tests on freepatentbar.com.
Ok, enough for strategy. Trying not to repeat what have already been reported, here are some questions I encountered ( not exact words, so don’t trust my memory and my understanding of these questions, double check MPEP and come to your own conclusion):
1. Appellant files a rehearing as well as reopening upon new ground rejection of the Board; what are the examiner’s options; the wording is a little confusing than the old question but it basically tests your understanding of the concept that board will wait until the examiner finishes the prosecution.
2. What can or cannot examiner use to make a 102 rejection: I got stuck with two choices; 1. A claim that contains a few compositions, a prior art includes one of them 2. The examiner may not make a 102 rejection based on a nonanalogous prior art; both seem right but I ended up with 2.
3. Best mode: I narrowed down to two choices; 1. Best mode must be the inventors’, as opposed to others; 2. If applicant put best mode in the spec but did not point out; again both seem to be right but I picked 2 as a safer choice.
4. evil 102(e) again: the fact pattern is as previously reported, but it asks you the earliest prior art date for 102(e)(1); the wording is tricky. You need to pay attention to what is asked; there is NS date, and a publication date of 2003; my question asks what the earliest 102(e)prior art date for the patent publication; it is the example 6 of 706.02(f) additional #2 example; if you only look at example 6, you’d pick NS date.
5. Whom can the PTO give app info to upon oral request: I had no clue about of this one; One choice appears to be attractive at first glance; it says unregistered employee such as a paralegal of an attorney of record, who is authorized by the attorney to obtain the info; the other one says applicant, attorney of record upon recognition based on personal acquaintance. I hesitated about the personal acquaintance and did a quick search and it turned out this was the right one. 104: Access as provided for in the rules, will be given on oral request to any applicant, patentee, assignee, or attorney or agent of record in an application or patent only upon proof of identity or upon recognition based on personal acquaintance.
6. 1.131 question: it is an old question but it puzzles me because it is still in the test data bank; it asks which situation is best for 1.131 affidavit; the clear choice is a non-patent document published less than one yr, but the sole rejection is under 103(a). I think it is a typo; it should be 102(a); you can use 102 to support 103 rejection but it should be for analogousness; it does not fit here; 1.131 can only use for 102(a) and (e).
7. Accessibility to Assignment records question: I had no clue on this one either but it is an easy lookup question; the answer is that a bona fide prospective buyers can have access to the info. 301.01 (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of the applicant or applicant’s assignee or patent attorney or patent agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
That’s all I can remember for now. Off to the beach I go. So I will not be able to answer any question.
Good luck
sarahL-
Thank you very much for the info. It’s quite helpful. In regards to #2, the examiner MAY make a 102 rejection based on nonanalogous prior art because it need not be analogous to be anticipatory (though ti DOES need to be analogous to qualify as 103 prior art): MPEP 2131.05 and 2141.01(a). As to #3, according to MPEP 2165.01 III, the applicant need not point out the best mode in the specification, as long as the spec discloses the best mode.
Note: the prior art exception in 35 USC 103(c) only applies to references that are ONLY prior art under 35 USC 102 (e), (f), (g). Published patent applications filed by another before the filing of the application under examination do not qualify under this rule because they are both 102 (e) AND 102 (a) prior art references. Thus the rule is that 102 (a) trumps 102 (e) in 103(c) considerations.
Regarding #6 of sarahL’s post, there is a similar question in a previous exam: #6 of the AM April 2002 exam. It asks which answer choice DOES NOT accord with proper PTO procedures in response to a 103(a) rejection based on a US patent filed and published by another before the filing of the application under examination. Option B states that you may traverse the rejection by relying on an affidavit or declaration under 37 CFR 1.131 that antedates the Jones reference. This answer is incorrect because this is indeed a proper response. I repeat, ONE MAY TRAVERSE A 102(a) REJECTION BY SWEARING BACK…as long as the reference used in making the rejection is either 102 (a) or (e). In this particular question, the patent application by another actually issued and is therefore 102 (a) prior art.
Incidentally, it is correct that the 103 rejection must be based on analogous art, but the patent app need not claim the same invention (if it did, an interference would be called).
I took the bar on 15th and passed. The exam was not hard and the questions are shorter than I expected. I would like to remember some questions for you, preparing the exam, here. But before that, I would like to point one thing here with regard to Scruff comments above regarding 102(a) and 102(e). To my knowledge and practice experiencec, 102(e) prior art is different from 102(a) prior art a reference (patent or application) can be 102(a) prior art “as of its publication date”, whereas the reference can be 102(e) prior art “as of its US filing date (or International filing date).” That is, to be cited as 102(a) prior art, it should be “published” before the invention date of the application under examiation. However, to be cited as 102(e) prior art, it does not need to be published before the invention date or the effective filing date of the application under examination. The “, published …” phrase in 102(e) is not limited by the phrase “before the …” in 102(e). For example, when the Examiner finds a patent application (“X”) which is under examination but not yet published, he may “provisionally” reject the application under examination under 102(e) if the claimed subject matter is described in the specification of “X”. Likewise, if he finds a later published patent application (X), he can reject the the application under examination under 102(e) if X has eariler US filing date than the effective filing date of X. Simply speaking, in practce, a US application or patent (i) published before 1year is cited as 102(b) prior art, (ii) published between 1 yr ~ the effective filing date is cited as 102(a) prior art, and (iii) published after the effective filing date but filed earlier than the effective filing date, is cited as 102(e) reference. If I am wrong, please correct me
By the way, those Qs that I remember are:
1. Before 5 minutes from midnight in German, the German attorney has got a Declaration signed by a declarant and a Response. If preparing fax documents, it will be 12:05 am there, but it is 5 or 6 hours before midnight in US. What should he do ? Fax ? Express Mail? abandon and revive ? … there is no choice stating that “fax the signed Declaration and not signed Response”, but a choice is there stating “fax the signed D and Response signed by the German attorney.”
2. When rejected under 102(b), the practitioner measured the drawing and found that the three elements, claimed and disclosed in the drawing of the prior art, have different sizes. That is, the prior art is silent regarding the size of three elements but only showing in the drawing. The other elements/limitations are disclosed in the reference. He argued that point to the Examiner to overcome the rejection. Is it work? No, because it is “of little value” to measure the size in the drawings, or something like that reason.
3. Choose 102(e) date questions — all of 3 Qs are the same. “International filing date”.
4. 1.131 affidavit Q – to overcome 102(a) or 102(e) rejection.
many repeats or derived repeats. If I can remember more, I will visit again.
I would add one tip. You can use two words for searching MPEP depending on the words. I tried two or three words and found that sometimes it may work. In addition, the monitor and letter were big enough. But, do not forget to click “open” every time you move to another MPEP title. You may fail to find your key word searh result if forgotten.
Dear ccc,
can you clarify no 3 above? I am not sure what your answer was?
Thanks
CC-
Thank you very much. So the bottom line is that in the event there is overlap between the classification of prior art, 102(b) trumps 102(a), and 102(a) trumps 102(e).
No 3. was about 102(e) prior art date simple question. You will read some situations in questions and should find the 102(e) prior art date. all of three Qs were about International applications having foreign priority dates, published in English and designating US. In this case, the prior art date is international filing date unless they were filed before 11/29/1999.
is the date 11/29/1999 right ? momently confused… Please double check.
Actually, it’s 11/29/00…close enough.
Dear All,
Thank you very much for your comments. It looks like I had Macie’s exam above. It feels like a blur to me now. I can’t remember any more questions (had Tribell, Document affect title, small entity status, austrailia-abandoned)..hmm.
This is a great site. I wish I had seen it the first time I took the exam.
I am selling my study materials which I received second hand from an examiner friend. I have the lectures, the notes that go along with it, and my own outline for $250. Please send email to abcd1919@aol.com
This might be a really simple question, but can somebody explain the difference between a Notice of Allowance and a Notice of Allowability?
Notice of Allowability usually comes before Notice of Allowance, which is more formal includes Examiner’s reasons for allowance, fees due, due date for fees, Ex. amendments etc.
Does anybody know how long it’ll take the USPTO to send the confirmation letter for registering for the exam? I sent out the application at the beginning of July. I received the postcard that I included in the application a week after that. The check was cashed as well. But when I called in to ask about the confirmation letter. I was told it’s going to take 4-6 weeks for evaluation.
I got mine in less than 3 weeks. Yours should be any day now
thank you DJ.
Are you registering as an attorney or as an agent?
If you are registering as an attorney, be sure to send in your certificate of good standing along with your fee. o/w they will register you as an agent and it will cost an additional $100 to register later as an attorney.
Responding to an earlier post, the reason that subsections (b), (c), and (d) of 35 USC 102 are called statutory bars is because while the invention might be novel, there are statutory provisions in place to bar the applicant from gaining a patent by virtue of his own acts (selling/using the invention, etc.). In this sense, the invention might satisfy the fundamental aspects of patentability (novelty, usefulness, and nonobviousness), but the applicant will still lose patent rights.
Subsections (a), (e), and (g) of 35 USC 102 are different because they are true provisions of novelty. If an application is rejected under one of these categories, the invention is not novel and therefore falls short of meeting the patentability requirements. Thus, the novelty rejections are more fundamental than the statutory bars in the sense that they are relevant to virtually any patent system.
The practical difference is that the novelty provisions (102 (a), (e), and (g)) are triggered by events taking place BEFORE THE INVENTION. This particular date is quite confusing because the provisional inventive date is the filing date (because this is the constructive reduction to practice date), unless the applicant can prove an earlier date of conception and actual reduction to practice (in a NAFTA or WIPO country).
The statutory bar provisions (102 (b), (c), (d)) all have to do with the applicant’s FILING DATE. Unfortunately, the MPEP doesn’t seem to stress this enough.
Incidentally, 35 USC 102 (f) doesn’t really fall under either category. Or perhaps it falls under both…
Font size in the actual exam – Does any one know if it is big enough for comfortable reading? The PLI material exam on the CD has too small a font, just curious
It is big enough. The contrast on the exam is horrible, I wish the fonts were bolder. The letters blend into the background. I have had to read one question 3 x. The words don’t stand out well on the background
Thanks DJ – my eyesight isn’t the best and reading from a computer screen is somewhat of an issue for me.
Dear All:
Does anyone know the answer of the question relating to ” Clock Fan Lamp ”
I appreciate your comments and hints
Thanks
BCphung
Is it true the current patent bar exam uses the 4th revision of the 8th edition of the MPEP and not subsequent versions? I know each chapter of MPEP E8R4 is available separately on the MPEP’s website, but they’re not linked. i.e., you can’t get to any chapter from the Table of Contents (this is not the case for MPEP E8R7)
Repeat questions from my exam
Mario Lepieux,
Moon Dust
Tribell
Markush group – R is …
will add more as I remember
Door handle repeated too (amend by removing “means for clause” is the answer
Took the exam few days back, missed bt 6 points, was disappointed. Here are the things I remember:
– 10-15 repeats from 2002/2003 exams
– spanish phone
– Lipgloss/gag gift – 102(b)
– German PCT
– Fax used for sending PCT papers
– 102(e) based on PCT filing, refer to chapter 700 examples
– last date for priority claiming based on IA filing
– supplemental oath/decl treated as amendment in reissue
– factual inquiries – 2100
– claim counting – ans 147
– Appeals – lot more questions than I anticipated, this is what surprised me & had to put in lot of time. Some cases I remember are facts when appl. goes to BPAI, then back to examiner & so on.
– Interferences – 2-3 Qs
– Duty of discl. – does corp. has duty to disclose? no.
Hi Vin,
do you remember what kind of interference questions were in the exam? There are really not many entries about interference questions on this site.
Thanks.
I just got back from the exam, and I passed it. I want to contribute to this site because it was an enormous help to me in my preparations. I did not purchase any commercial course. All I did was read the study guides on this website for each section of the MPEP. I paid special attention to Chapters 700, 2100, 1200, 1800, and the rules. I should add that my dad is a patent attorney, so I was able to discuss the concepts with him. As other posters reccommended, I knew the 2003 and 2002 tests cold. I memorized all the questions that this site identified as repeats for the 2000-2001 tests, but I didn’t look at them beyond that. I also didn’t look at the tests prior to 2000.
In terms of material that I saw on this exam, I had between 15-20 repeats:
-Moondust
-Tribell
-Mario Lepiux (only the first of the two questions from that fact pattern)
-Japan – 45 days
-Markush
-diff. claim counting question (I wrote 8)
-Australia pct
-door handle
-Japanese application
-Best mode
-Piecemeal question
in terms of other questions, there were 2 questions regarding what is required for getting a provisional date, a question about fraud, one about rapidity, nothing about death of inventor, several 102(e) questions 9both of which I had to check the additional info underneath the flow chart, a question about what is needed fto get the 30 month date for the PCT.
I’ll post more later if I remember more. it’s kind of blur right now.
In terms of searching, I had a relatively new computer and its exactly like using the Adobe 5 version, except you can only access one section at a time.
Good luck to everyone.
Hi OSU Buck,
Congratulations on your pass. Do you remember more about the Australia pct question? There is some discrepency in people’s opinions on this website. Some said it’s a complete submission. Someone said it’ll be abandoned. Maybe you can add the freshest version on that.
Thanks.
Cindy,
I dont recollect the interference Qs, I had to put in few minutes of search to get the possible answer. Basically I had never focused much on this chapter & 2-3 Qs wasnt something that one can let go.
Are you Vinayak who posted a few times here?
What went wrong on your exam? Was this your first time?
If anyone is looking for Patent Bar study materials, I’ve put up all my materials for sale on ebay. I passed about 2 months ago.
The materials include the PLI patent bar review course, some bullseye materials, and a couple patbar.com books. All the included items are described in detail on the ebay page.
http://cgi.ebay.com/ws/eBayISAPI.dll?ViewItem&item=110421599130
Hi,
I am selling my PLI materials. I passed a few days ago. I only have a copy of the PLI CD’s which I bought from a colleague. Please make me an offer.
just passed yesterday, wanted to give a little back as well.
firstly, i did not study much (wanted to study more, but got bogged down with work/life and didn’t have a chance to). here’s what i did:
– read the free patent bar outline
– went through the 2002 and 2003 tests
– reviewed all the repeat questions listed on this site
– paid particular attention to the oct 03 repeats til i knew them cold
– i also practiced searching the mpep with acrobat 5 a day or 2 before the exam
in the exam, i got probably about 20% verbatim repeats (some listed below). my strategy was to breeze through these to save time for the rest of the questions. there were many questions like: ‘which of the following is not a requirement for a 102 rejection’ or ‘which of the following is required to get a filing date’, etc. (of course more obscure than my examples). the answers were basically word for word from the MPEP, usually from the same section/paragraph. for almost every question i did not know immediately, i went to the index to find the appropriate MPEP chapter (if i could not immediately recognize it), then went to the appropriate chapter and searched for a few key words from each answer choice. most of the time, i found the key section/paragraph and was able to answer the question.
if you are able to get through the repeats quickly, and navigate/search the MPEP fairly efficiently, you should be able to answer all the questions in the given time.
my repeats:
– mirror (parallel/perpendicular conflict)
– 1.131, 1.132 affidavits
– germany, costa rica, and sweden nationals filing PCT in USPTO
– spanish phone – design
– small entity status (refund)
– broom
– electric fan
– door handle
– investigating deceptive intent
– best mode
– multiplicity of claims
– mario lepuix (canadian printed publication)
– piecemeal
– smith laminate
– 34.9% – 35% obviousness
– district ct. decisions not binding
– dead inventors (several q’s)
– no certificate of mailing from foreign country
– japan 45 days
– lancer toothbrush
– copper substrate
– bloc – synthetic z (cancer cure)
– smith DRAM
– tribell
– late IDS when client knew about prior art
– parking meter
– smith over jones appeal
additionally:
– 2 questions on what you need in order to get a PCT filing data
– filing a 2nd amendment after advisory action
– maintenance fee (know that if you are late in paying maintenance fee, you must also pay the surcharge, can’t delay surcharge payment until later)
– know what does/doesn’t constitute offer of sale
– know what elements need to be filed in an accelerated prosecution application
– reissue divisional
– if you file app. with no claim, you can convert it to provisional to preserve priority date
– as others have mentioned, several on appeals, on topics like new grounds for rejection by board
i’ll probably think of more and post as i remember
thanks again and good luck to all!
Cindy,
If I remember correctly, the Australia PCT question involved an incomplete submission to the national stage, including just the application and fee, but no oath, etc.
HI OSU Buck,
Some people said the application will be abandoned, some people said the application is qualified as the national phase entry. Do you remember the specific call and the options for this question? thanks.
What is the door handle question that everyone keeps mentioning? Is that the one from the October 2003 exam where the answer has the word “knob” in it.
Be careful about how you go about selling you used Patent Bar material. Read
http://des.uspto.gov/Foia/ReterivePdf?system=OED&flNm=0133_MOR_2007-03-01
Somebody from a patent bar review course informed the PTO that the person, who had passed the patent bar, was violating copyright laws by selling their material on ebay. This person lost on appeal because of procedural issues, but you don’t want to be denied admission to the PTO because of selling your materials.
Here’s more background info…
http://www.intelproplaw.com/ip_forum/index.php?topic=3422.0
I think this person made an illegal copy of the DVDs and sold them on ebay. that’s why he violated the copyright law.
Don’t know whether seeling used but original PLI or PRG material will be an violation though.
Isn’t selling used (but original) PLI material like selling old textbooks?
I would just like to say thanks to everybody who has posted on this site. It was a tremendous help and instilled me with much confidence before I took the test for the first time last week and passed it. I would like to do my part, like others have, and write about my experience:
I did not spend money on study materials. I read the study guide from freepatentbar.com and made my own notes. I took all the exams from 2000-2003 over and over again until I was able t o score 95+ on all of them. When I went through the answers, I went to the MPEP sections and read them. The important thing is to understand the concepts and the answers, not just memorize the questions. Then I was fortunate enough to find this website and I reviewed the past questions a few times. When I took the test, probably 60-70% of the questions I had seen before in some form or another, many of them verbatim (maybe 25). Here are the ones I can remember:
– mirror (parallel/perpendicular)
– tribell
– smith DRAM
– titanium baseball
– japan 45 days
– piecemeal
– amending the abstract (ISA)
– velcro
– what an assignee not of record can sign (small entity)
– australia PCT
– lancer toothbrush
– door handle
– when does jurisdiction pass to board in appeal (affidavit question)
I’ll post more if I can think of any. I really do appreciate all the posts I’ve seen on this site, so if anybody has any questions on the test or my study methods, I’d be more than happy to answer them.
Good luck to all of you taking the test in the future!
Just remembered a couple more:
– moondust
– Y and Z (cancer treatment)
You should really get used to searching the MPEP. That helps quite a bit, especially if you can know where the information is most likely to be found and are adept at using the Find function. The software is a little slower than what you probably have on your computer, but it’s not so slow that it’ll take up all your time. I finished the morning session in two hours and the afternoon in 1:45, and I felt so confident that I ended my sessions early and ended up spending less than five hours total at the testing center.
just passed today on my first try! Couldn’t have done it without all the helpful tips on this site. Here are a few of the questions I remember from today:
XYZ assignee
lip gloss
Spanish phone
mirror (parallel/perpendicular)
japan 45 days
piecemeal
smith DRAM
Y and Z
copper substrate
claim counting
ABCD/BCDE
Laurel Abbot Hardy
hairgel
Indefinite Claim using ‘high’
– 34.9% – 35% obviousness
Death of inventor
I saw many repeats from old exams, mostly from Oct 03 AM and PM. I had to look up quite a few of the questions on the MPEP from 1800, 1400, 2200.
Good luck to anyone taking it soon!
Irrational,
Thanks. How about 1200 Appeal questions? Many?
Yes I remember there being several Appeal questions. There was one or two concerning the Board giving a new ground of rejection.
I just passed on Saturday.
I had 8 appeals questions on my test and probably 12 PCT. So be sure to know those areas of the MPEP really well.
LawStudent,
Do you recall any of the appeal or PCT? I haven’t been studying these two chapters much and my exam is coming up in 48 hours.
Thanks.
just passed today. first time!
In addition to all the normal repeat questions..my exam is practically summed up by the person named “passed!” posted on Aug 6th 2009.
In addition during the AM:
-I had like 4 or 5 oath/declaration questions dealing with death/legally incapable inventor…who can sign? so know MPEP 409 pretty well.
-one 37 CFR 1.99 question
PM: Appeals, Reissues, and PCT’s!!! (review at break if you can)
-can you amend/file to amend during chapter 1 of PCT application dealing with specs and ommitted drawings that have been orginally claimed?
-disclaimers…who can sign? (MPEP 1490)
-correction of inventorship in a reissues
-103 stuff
Just passed last week on my first try! Would have posted earlier, but like one poster said, had to celebrate, and let off some steam. Anyways, I’ve got to give back, so here goes. My preparation consisted of the PLI materials and THIS WEBSITE. I basically studied for the last 4 weeks full time, and before that for about 3 weeks just glancing at stuff. I also had the bullseye outline material, but didn’t look at it too much.
After I finished listening to PLI CD’s, I started using the patware software to take old tests repeatedly, in addition to the PLI exercises. I only really worked on the 02 and 03 tests. The first time I took them cold, I was getting around 60%. The next time it jumped to 80-90%. Basically, once you do the questions once, it’s not hard to memorize them. Just look at the questions constantly and it’s not too hard.
My test was very very similar to “irrational’s” above. Like others have noted on here, the tests lately have been very focused on Appeals (1200) and PCT (1800) questions. Also, don’t get too stressed about 102(e) because the fact patters are all very similar to the 700 flowcharts which help a TON! Look over those closely. I must have had close to 35-40 repeats on the test, so that was nice. Also my morning section felt way more difficult than the afternoon one. I remember feeling iffy after the first part, but don’t get discouraged. This most likely means there are a bunch of beta questions because the second half, I felt like a crushed it. Anyways here are some of the questions I can remember… Enjoy and Goodluck!
– Velcro
– mirror (parallel/perpendicular conflict)
– 1.131, 1.132 affidavits
– germany, costa rica, and sweden nationals filing PCT in USPTO
– no ownership required for small entity status
– door handle
– investigating deceptive intent
– claim counting (147)
– piecemeal
– smith laminate
– dead inventors (several q’s)
– no certificate of mailing from foreign country
– japan 45 days
– lancer toothbrush
– bloc – synthetic z (alleviate pain/cancer cure
– smith DRAM
– tribell
– late IDS when client knew about prior art
– parking meter
– smith over jones appeal
– Larel Abbot Hardy
– Lots of Correction of Inventorship
– hairgel
– Titanium baseball (july 4th)
– 5 steps to cross road
– Supplemental Oath as amendment
– Jon to John (variation of which I think ADS was the answer)
Hope this helps, and I am also trying to sell my used materials for pretty cheap. Let me know at oo7swoosh@gmail.com. Thanks!
Preliminary pass and received letter which says fail?
What should I do? Help!!!
Did they tell you a score when you took to the test or did they just say you passed?
What was your final score when you got the letter?
The letter said 68%. But Prometric’s printout said “the preliminary result shows that you passed the USPTO reg exam for patent agent / patent attorney”.
I am going to call the number on the letter and go to Prometric tomorrow. This is shit, really shit.
Did your Prelim Pass letter have a “Candidate’s USPTO ID” on it?
how come?…wow, i’ve never heard that happen. sux to be you
Hello,
Apologies if this question has already been asked before but where can I obtain a PDF, searchable copy of the MPEP? Is the best way to buy it from the USPTO website? Thanks in advance!
JQ
You can download them free from USPTO:
http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
Look to the bottom of the page do download them in a zip package. They will be separated by chapters, but that is how you take the test so just get used to it.
Thanks!
I take it tomorrow. Any last minute advise?
I just mailed in my application to take the patent bar under the qualifying courses option (I don’t qualify by degree). Does anyone know about how long it takes to get a response of whether I can sit for the exam or not?
I want to start studying, but don’t want to waste my time if i can’t take the test.
I had a major that was too new be listed (Information Technology accredited by ABET – i.e. an engineering degree), so I was unsure if they would even allow me to take the test or make me take more classes.
It took the PTO the full 4 weeks (the time before you can call and inquire your status) to hear back from them. On the other hand, my friend, who is a EE found out in a little over a week.
I didn’t start studying until I knew I could take it. I studied full-time for a month, but I passed (today).
Hope this helps.
Thanks for responding! I think I might be in a similar situation as you then – my major, bioengineering, is not listed, so I have to qualify by classes, and that is a little iffy, depending on which of my ‘engineering’ classes they will take.
Hi Ch333,
First of all, congratulations on your passing the exam. Do you remember any new questions appearing on your exam? I will take the exam in less than two weeks. What should I do for the last two week preparation?
Thanks.
Cindy,
There was nothing really new that Irrational and HookEm didn’t list. There were 5-6 appeal questions and 3-4 Death to the inventor questions. There was also 3-4 questions on IDSs. I counted 15-20 repeats in the morning and about 15in the afternoon. No PCT questions till the afternoon.
For the week before my test, I redid the 2003 tests (if you know them well, they only take an hour each), took a few random tests (Scored in the 80’s), and studied all the questions on this site (“Exam Questions and Concept” and “repeat questions”.) I didn’t take any tests before Oct 02 because of time and I don’t think the test as a whole is that helpful, but I did know all the repeat questions from those tests. My worst score I ever got was from the PLI May 2001 test – I think it was because the MPEP has changed a little since then and it was early on in my studies.
Another thing that is helpful is that I used a “cheat sheet”. Before the test, you take a 15 minute tutorial. The tutorial really only takes 3 minutes, but you can use the time to make a cheat sheet. (http://freepatentbar.com/study_material/FreePatentBar.com%20Cheat%20Sheet.pdf ). Just to warn you, they didn’t give me scratch paper, but a laminated sheet of yellow paper that have a lot of writing on the top 1/3 and a grid on the bottom (30 lines). The sheet was identical front and back and they gave me two sheets. As you know dry-erase pens aren’t finely pointed so you might need to skip a line and use font and back of both sheets.
I thought it was a cruel joke because I am left-handed and the pens kept dying on me (I went through 5-6 of them).
At the break, the computer just goes into a 60 minute optional count-down that you can end early if you like. If you come back early, you can erase your cheat-sheet from the first half and make a second one for the PM portion of the test. There is plenty of time before each half to prep and get ready.
I hope this helps. Let me know if you have more questions. Good luck!!!
KB
Just an FYI, I had the same situation as you, and so they had to go by my courses. They took so long to write me back that I ended up calling them to find out what was taking so long. It turns out they can take up to SIX weeks to get word back to you, and I got my acceptance on the very last day of that time period. Very frustrating.
Anyway, you shouldn’t worry. The most important credits are the physics courses and basic engineering principles. You should be fine.
Thank you Ch333. this is helpful. I am really tired of the studying. Cannot wait for the exam.
As with everything in the patent office, the 3 month window started with the mail date of the letter authorizing me to take the test.
Then it’s just when the prometric site is available.
How long is the wait between the time you receive your allowance to take the test, and the earliest date you can take the test? I know it will depend on the test site, but is it usually within a few days, or few weeks, etc?
Anyone else have comments about how long the OED response took to tell them whether they could sit for the test (based on classes, rather than major)?
Thanks!
it took me 5 weeks to get the letter. i registered for the test about two days after I finally received the conformation letter. There is a confirmation code you need from the letter to be able to register with prometric test center.
Can someone help me explain this following question (april 2002, pm, #27)? The answer is (C). However I don’t understand why the provisional 102(e) rejection works here. Application X and Y claim the same invention using identical language. Is it a statutory double patenting bar? Thank you.
=====================
27.Adams filed Application X on March 1, 2001. Beth filed application Y on May 1, 2001. Neither application has been published. Applications X and Y are copending and commonly assigned. Earlier filed application X claims the same invention as claimed in application Y using identical language. In accordance with the MPEP, which of the following actions should the examiner or assignee follow?
(A)The claims to the same invention in application Y should be rejected under 35 USC 102(a) as being anticipated by application X.
(B) The claims to the same invention in application Y should be rejected under 35 USC 102(b) as being anticipated by application X.
(C)The claims to the same invention in application Y should be rejected under 35 USC 102(e) as being provisionally anticipated by application X.
(D)The common assignee should file a terminal disclaimer in application Y to avoid any question of double patenting.
(E) The claims to the same invention in application Y should be rejected under 35 USC 102(e) as being anticipated by application X.
706.02(f)(2)
This is exactly where I got confused. The definition of provisional 102(e) rejection is: If an ealier file, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner sould dtermine whether a provisional 102(e) rejection of the later filed application can be made.
102(e) rejection should be only used when the earlier filed application discloses but not claims the same subject matter…
My question about #27 (april 2002 pm) was why provisional 102(e) rejection was used in the situation where the earlier application claimed the same invention using identical language.
Cindy,
This is my take, for what it’s worth.
The short answer to your questions is that “C” is the best answer of the bunch. You will find that on the patent test-you are picking the best answer, not always the correct answer.
A,B and E are wrong because they don’t acknowledge the common ownership. D is wrong because a terminal disclaimer won’t correct statutory-type double patenting. So you are left with C. The provisional rejection allows application Y to amend their claims to be different before the first office action because they have access to application X (i.e. C is not wrong, while A, B, D, and E are clearly wrong.)
Thank you Ch333. It makes sense to me now.
Cincy,
are you sure it’s #27 april 2002pm session?
sorry i just can’t find it there
it’s actually oct 2002 pm and this is the explanation from j white
“27. The better rejection would be same invention double patenting. But that is not among the answers, so the next best thing is a provisional 102(e) rejection that accomplishes the same thing. Answer C sets forth the correct procedure.”
d/n help too much but this is what the guru says
thank you for the clarification.
Does any one know why answer (C) is not right in the following question (Oct-2002-pm, #33)?
============================
33.Xavier files a complete first reply exactly 10 weeks after the mailing date of a final Office action that sets a 3 month shortened statutory period for reply. An Examiner’s Amendment is necessary for the purpose of placing the application in condition for allowance. Which of the following statements is true?
(A) If Xavier gives authorization for the Examiner’s Amendment exactly 2 months after his reply, the application will be allowed.
(B) Authorization for the Examiner’s Amendment may be made at any time within 6 months of Xavier’s reply to avoid abandonment of the application..
(C) Unless Xavier gives authorization for the Examiner’s Amendment within the 3 months shortened statutory period for reply, the application will be abandoned.
(D) If Xavier gives authorization for the Examiner’s Amendment exactly 2 months after his reply, the application will be abandoned unless accompanied by a proper petition and fee for an extension of time.
(E) Abandonment of the application will be avoided if Xavier gives authorization for
the Examiner’s Amendment any time within 6 months of the mail date of a final Office action. No extension of time need be filed if Xavier gives the authorization between 3 months and 6 months after the Office action.
a complete first reply to a final Office action has not been filed?
The three month shortened statutory reply can be extended up to six months. Abandonment happens after six months.
I guess the CFR is not provided during the exam. Just the MPEP, right? Also, those who passed, could you share how much time you spent studying for the exam?
The CFR and 35 USC Sections are in the appendix of the MPEP on the test. Also, I spent about 200 hours studying, but passed it on my first attempt. You need 150 hours at a minimum.
I just took the test today and failed with 65%. What did me in is I didn’t have enough practice in the international/PCT questions… and there were tons! As far as repeats from available tests, I would say I had no more than 8 from the 02 and 03 tests.
I didn’t take the test lightly, but I could have put in more effort to. I studied for about 50 hours, and will put in at least 100 before I take it again in April. Good luck to everyone!
too*. My brain is shot!
I took my exam on August 19th and failed with 68%. I was not strong enough in PCT and that cost me the exam. There were about 15-20% repeats. Good luck to everyone!
Does anyone know what fees you need to pay to retake the exam? Is it just the $150 prometrics fee (and just signing up like the first time)? Or do you need to pay another 200 to the PTO as well?
Thanks!
Dan,
You need to pay $240 for PTO and $150 prometrics fee to retake the exam.
Too bad… Thanks, Keith.
I’m taking the PatBar next Tuesday. I’ve take the ’01 and ’02 test and will start on the 03′ tests tomorrow. My test scores have gradually gotten better after every test and I think its 1) I’m seeing the repeats and 2) I’m finding key phrases in the questions/answers to help me search in the electronic MPEP and are leading to the verbatim answers. I was wondering if the questions/answers for recent test takers are the same format (some of the answers are verbatim) as the ’01, ’02, and ’03 test?
Thanks. The site is helping a lot.
I just passed the patent bar exam yesterday on my first try. Thank you so much for this wonderful website.
Nothing in the test really suprised me.
I spent 90 min to finish the morning session. There were about 5 repeats vertatim and a couple of the reported PCT and appeal questions. So I knew the afternoon session will be harder.
The afternoon session was more difficult with all sorts of new questions. Fortunatly I have visited this website daily for 2 months. So I have seen most of the questions reported by past test takers. They were new, but they were managable. The last question was the tribell repeat.
I spent more than 500 hours total in 6 months in my study. So I am well prepared. I started looking up the legal terms in the dictionary. With the help of the PLI homestudy material and Bullseye, I started getting into the mood. I read the MPEP a lot since that’s the only way I can understand the legal lingo. So I am quite familiar with all the chapters and where to find answers.
The week before the test, I did the 2002/2003 four exams for the forth time and got 100% accuracy in each of them. The Saturday before the exam, I went through the new questions reported here. And for Sunday and Monday (labor day) i just relaxed and took it easy.
I also went to the test center a few days before the test to take a look. The test center i chose had a cafeteria on the first floor. So I had warm meals for both breakfast and lunch.
The day of the test, I arrived at 7:30am. I had breakfast and coffee and started walking around the office park. Meanwhile, I went through the topics of different chapters in my mind. I took the 60min break for lunch. Again, i took a walk after lunch. It helped me to clear my mind and concentrate in the afternoon.
The way i did my answer sheet was quite effactive.
I devided the paper in half (left and right). And then devided each half into 5 different sessions. So there would be total of 10 sessions. And each session contained 5 questions. I assigned each session (5 questions) 15 minutes. I drew a line after each session. This helped me to keep track with my time. If I was spending too much time on one question, I’d just mark it and come back later.
It’s a difficult test. But it’s definitely managable. I enjoyed the time I studied for it. It reminded me of college. I am glad I am still capable of concentrating on things after I left grad school for almost 7 years. This summer was very unevently. Since I spent most of the weekends in the library. But it’s all worthy it now.
Key to success:
1, make sure know 2002/2003 questions cold.
2, visit this website at least once a day 2 months (or even 3, 4 months) before the exam. Read other people’s post and look up answers.
3, check out the test center before hand to know where the bathroom is; whether there is food court or cafeteria on site; meet the staff and introduce yourself; see how cold the test room to decide whether a sweater is needed.
4, arrive early on the testing day. eat a full breakfast. use the bathroom. keep a steady pace when taking the test. don’t panic if you cannot find answer. Just move on.
Just believe in yourself. You can do it.
Hello,
I am currently in law school and plan on taking the patent bar by next spring. I wanted to start studying now, since I have a lot going on with being in school at the same time.
I was wondering if anyone can suggest what is the best material to study from? I never get a straight answer. Some people say PLI is better than the PRG or vice versa. Please Help!
Please feel free to give me any other advice or suggestions!
I received a preliminary grade of “pass” (still haven’t gotten my official letter) when I took the exam two weeks ago, and I didn’t use any study materials other than the 2003 exams available at the USPTO web site, the MPEP, and this web site. The main trick is to know what you’re likely to see on the exam. Since they ask a lot of repeat questions, make sure that you know as many questions (and answers!) from as many previous exams as possible. There is generally a lot of emphasis on 102/103/112, so make sure that you know what are grounds for rejection under each paragraph of those sections, and how to overcome claim 102/103/112 rejections. There tend to be lots of questions on appeals and reissues, so make sure that you know the basics. What I found most helpful was generally knowing my way around the MPEP. Since the “on-line” version available at the exam only allows you to search within the chapter that you have open, it’s very helpful to know in which chapter the information you need is likely to be found.
Samantha,
I used an older version of PLI to pass the exam two months ago. I selling my material if you are interested in buying. You do not need the most recent PLI version to pass the exam; an older version will do just fine and will save you money as well. I originally bought the materials in early 2008.
Also, I made my own outlines of the material which I am also selling.
JusT passed,
I have actually been looking around to buy some patent review materials. How much are you selling your PLI materials for and how much are you selling your outlines for?
Thanks,
Samantha
Samantha: I’m selling everything for 500 (includes PLI: CDs, DVDs, binder; and my own outline). I have my outlines associated with each chapter of the PLI materials. I do not have a hard copy of the MPEP (at my old apt), but if you really need it, I can arrange for it to be shipped to me for about 10 bucks. I actually don’t recommend you study from the hard copy of the MPEP (I never used it) because you will only have the PDF version on the actual exam. So, it’s best you get accustomed to reading/studying from a PDF version of the MPEP.
Also, if you want, I can send you a hard copy of questions and answers of all the past exams (until 98) on this site for an extra 50 bucks. But again, I don’t recommend using a physical copy of the exams, unless, you are at beginning stages of studying and want to make notes next to the old exam questions while you review.
Let me know I will give you my email address.
Thanks
If you are self-disciplined and good at reading material and taking notes, you shouldn’t have to spend any money. Just get a copy of the MPEP, use the free study guide on this website, and take all the practice tests you can get your hands on, especiall 01-03. I didn’t spend any money on study materials and passed on the first try.
However, you do need to put in the work. I studied ten hours a day for three weeks before the test. To each his/her own…..
Tech Passer,
You must be really, really smart. I’d say that about 90% of people need some sort of review course. I was a law student and failed the first time, even with the PLI materials. THe second time around, I spent more time reviewing the PLI materials and taking my time to understand each concept.
You are right though, to each his/her own……it depends on what you think will work for you.
JusT passed,
What version are your PLI materials? When you say PLI binder do you have books from the course or is it only one binder?
You can give me your e-mail if you want to give me more details and I will send you an e-mail.
Thanks!
pli0707@aol.com
Hi, thanks for this website folks. It really made a difference. I passed on 09 09 09 the ominous date.
I guess most ppl already figured out the 3 things that are most important for passing
1. read through the chapters 700, 1200, 1400, 1800 and 2100 in the actual MPEP in full
2. know the 2002/2003 questions cold. Cold as in cold cold.
3. read through the outlines on this site, and prepare your own outline
One good tip i got for the exam from this site is to draw an A,B,C,D,E grid for the 50 questions before you start. That way you have much more control and can check which questions you have already narrowed down to 2 or 3 choices and come back to those later.
And dont panic. Even if you think that all you remember is Jerusalem Artichokes dont worry. It will come back to you in the exam. You will most likely have b/w 10 and 15% repeat questions. Given an average time of about 3.6 min to solve one question , this will save you almost 1h if you can just click and move on. So you will have all that time in addition to look up things.
Good luck all!!
Hello All,
My PLI materials are still up for sale if anyone is interested.
Thanks
Please contact me at anuragkumar@yahoo.com. I am interested.
Anu
Didn’t pass, I got a preliminary score of 65%. Will try again, I used OMNIPREP patent and it is a complete joke. All they do is take the already posed old exam questions and place them in some webpage for you to take. Then they COPY word for for the “Exam Questions and Concepts” section of this website.!!! and then they claim that they have given you all the answers for the test so there is no way you can fail. Anyways I will demand my money back, and I would sue them for copying your website and making a profit from it. Next time I will use this website…
Good Luck
Dear Intellectual Property Forum Readers,
Omni Learning Corporation, the publisher of OmniPrep Patent Bar Review Course, strongly disagrees with the negative comments about our course posted on this message board. Our mission is to produce the highest quality patent bar course to ensure that our students achieve success on their USPTO exam. Because we are confident about the quality of our course, OmniPrep offers the best money back guarantee in the industry. Since our students’ success is our priority, we are extremely diligent about addressing all student questions and concerns. Given that 98% of our students pass the patent bar exam, we question whether these comments are real complaints, or more likely, false statements posted by a competitor. If these are real complaints, or if you have any questions regarding our course, please contact our Administration Department at: admin (AT) omnipreppatent (DOT) com.
Thank you.
Administration Team
OmniPrep Patent Bar Review Course
Omni Learning Corporation
sambo
look
we can @ least have some positive outcome
if the statement by the omniprep
“90% of All Questions Seen on The Current Exam
Input from our team of course developers, who sit for the exam on a regular basis, and past students, who have recently passed the exam, have been combined into our NEW proprietary Question Bank, which contains 90% of all the questions that you could possibly encounter on the patent bar exam. This means that it is now IMPOSSIBLE for you to fail the exam once you have completed our course! No other course in the industry even comes close to having as many current exam questions.”
is true then y d/n u post some of the q that weren’t mentioned yet here on this site
just 1 more thing. if there’s any illegality involved i d/n wanna be breaching the law please disregard the offer
That’s a common complaint with Omniprep. They have a refund policy, don’t they? FWIW, I used the Bullseye Patent Bar materials linked from this website. Passed on the first try and it was much cheaper. The materials were great.
Dear MyPatentBar Forum Readers,
Omni Learning Corporation, the publisher of OmniPrep Patent Bar Review Course, strongly disagrees with the negative comments about our course posted on this message board. Our mission is to produce the highest quality patent bar course to ensure that our students achieve success on their USPTO exam. Because we are confident about the quality of our course, OmniPrep offers the best money back guarantee in the industry. Since our students’ success is our priority, we are extremely diligent about addressing all student questions and concerns. Given that 98% of our students pass the patent bar exam, we question whether these comments are real complaints, or more likely, false statements posted by a competitor. If these are real complaints, or if you have any questions regarding our course, please do not hesitate to contact our Administration Department at: admin (AT) omnipreppatent (DOT) com.
Thank you.
Administration Team
OmniPrep Patent Bar Review Course
Omni Learning Corporation
I am flattered that OmniPrep has a large commercial test prep site like OmniPrep has would take the time to post a comment on a relatively small, non-profit site like mypatentbar.com. However, multiple posts containing identical content in various areas of mypatentbar.com seems to be a bit of overkill.
Although we appreciate your comments, and are at hopes that you will continue to bring to our attention any commnets that you may have, we ask that you only post one comment per topic.
OMNIPREP falsely claims they have a pass rate of 98%
According to their website:
“Pass Rate Calculation Method
Our pass rate is calculated by dividing the number of students who did not request a refund by the total number of students who have used our course to prepare for the patent bar exam. This is an extremely accurate measure of our course pass rate, given that our students have a very strong monetary incentive to let us know if they did not pass the exam.”
It is false advertising to say 98% pass, based on some probable correlation. Who knows what kind of stipulations they put on people to try not to give refunds back. The more they deny refunds, the higher the pass rate
Steve,
Our refund policy is clearly explained on our website:
“Refund Procedure
In the unlikely event that you do not pass the Patent Bar Exam after completing our course, you can either request:
1. A full refund; or
2. Free lifetime access to our course until you pass the Patent Bar Exam.
To request a refund, just send us your original USPTO Official Examination Results Letter via regular mail within 30 days of your enrollment expiration date, and we’ll mail you a check for $495, no questions asked. Please send the letter to:
Refund Request
OmniPrep Patent Bar Exam Review
Omni Learning Corporation
848 N. Rainbow Blvd., # 1128
Las Vegas, NV 89107
To request lifetime access to our course, just follow the above instructions for the money back guarantee and we’ll activate your lifetime enrollment immediately upon receipt of your Results Letter.”
Thus, there are no “tricks” done to prevent students that do not pass the exam from receiving a refund, and any student that does not pass the exam has a $495 incentive to make sure that they do request a refund.
This means that our calculation method is far more accurate than the survey method used by courses such as PRG to calculate their 88% pass rate.
Steve, in the future please feel free to contact us before posting further such statements, so that we can clarify our policies for you.
Thank you.
Administration Team
OmniPrep Patent Bar Review Course
Omni Learning Corporation
Passed the test last Tuesday. First try. I’ve been celebrating. It’s a huge relief not to have to look at that stuff several hours a day anymore.
I ABSOLUTELY could not have passed the test if it was not for this website. The “repeat questions” and “exam concept” section with everyone’s comments were the key to passing for me.
Just some bits about the test that I wanted to share.
1. Studying.
I’ve been studying since May. I put way too many hours into it because I didnt discover this site until July and didn’t know how to study.
I started out, in May, used OmniPrep. It was not helpful for me. The lecture guy should be on suicide watch cause he’s depressing. He often has to correct himself and is not clear. He’s constantly sighing and you can not help but think that he does not enjoy what he’s reading at all. He recites rule number after rule number which is not what someone who has no concept of the MPEP needs to hear at first. In my opinion, a prep course, and the learner, should be focusing on major concepts in the lectures. The details (like rule numbers) should be read later by the learner himself after he had a general idea of what he is about to read as provided by the lectures. Also, I was blown away by the similarities of the outline on this FREE website as compared $495 dollar one on OmniPrep. (This is completely coincidental that OmniPrep has recently commented on here, I was planning on expressing my concerns about their program along time ago.)
PatBar was helpful for me. The lectures, chapter readings, and example questions were very beneficial.
BUT, to pass the test, you must be familiar with the 2000-2003 old tests (right and wrong answers) and then the new repeat questions (along with student comments) provided on this website. Very very helpful.
If you haven’t taken a survey course about patents, you’ll need in excess of the recommended 120 hours, I promise. I’m talking closer to double that.
2. The Test
I would recommend learning how to search within particular chapters. I was under the impression that you were allowed to do a search of the entire MPEP with the “find” option come test day. This wasn’t the case. The “find” option is limited to finding things in individual chapters only. Therefore, I had to search the “index” to find out where a particular concept, for example “fraud,” was located and then search within that specific chapter. So, know what concepts are in what chapter.
The morning part was really tough for me. After about question 10 I was thinking “Lord, help me continuing studying so I can pass this thing next go around.” Panic. Then I got familiar conducting searches using Prometic’s electronic MPEP and the repeats started coming in, verbatim. So DO NOT give up, if the test starts off rough. Just mark an answer and come back to it. You will have time if you’ve taken the practice exams.
Lots of repeats. I probably had 40 or so from the old tests and the new ones listed under “exam concepts.” It’s a waste for me to list individually the particular questions that I had on my test. Just treat this exam like a regular law school exam where you HAVE to cover everything (old exams, exam concepts, repeats) on this website, so that when Prometric tests you on a narrower scope, so you’ll be ready.
GOOD LUCK
I am a loyal reader of the website and first time to post. I passed the exam on Sept. 17th! I would like to say THANK YOU to everyone who has contributed posts and exam experiences here and a BIG THANK YOU to the owner of this website for your time and dedication! I could not have passed without you guys!
Here are a few points I would like to share:
1. DO the old exams!
I went through the PLI study material first, listened to John White’s lecture whenever I can: in the car, during the walk…But I got only 50% on the mock exam. Doing the old exam really helped a lot. After I finished all the old exam, I could easily score over 90% on the PatWare practice exams.
2. Get used to the MPEP search.
Although I did all the old exams, I didn’t get many repeat questions in my test. Being able to quickly locate the subject in the question was the key to pass. When I was studying the old exams, I followed the suggestion from a friend:
No matter you know the answer or not, always go the MPEP to find the chapter and locate the answer and also read any related text.
3. Use the hint in the question to finder the answer:
Many questions mention the corresponding Rules ( 37CFR ). Go to the Rule section of MPEP. I feel that many time it was much easier to find the answer in 37CFR than in the MPEP chapters.
4. Don’t panic during the exam.
Do the easy or repeat questions first ( you don’t want to lose any easy points!). Mark the questions that you have doubts and look up the MPEP later.
5. Read the Exam Questions and Concepts in this web site. Very helpful!
Good luck!
Thanks everyone for the help. Passed on September 23rd. I had questions starting April 2000 (Mario LePeiux/LeMeiux) and the “wing hat.” Potter, Jo(h)n Jones, melting point were the more prominent questions. Three dead inventors. A lot of ex parte reexam (10%), appeal (5), protest (3), PCT (10+), inventor correction (2, an absolute repeat from AM to PM), lots of 2100/700.
To calm down before I answered the first question, I pulled up 102 and read it at the start. Don’t be afraid to mark questions if you can’t answer in 60 seconds. I left an hour in each session to look up 10 or so questions. Good luck everyone.
I passed. The exam questions and concepts section was *extremely* helpful. Equally helpful was the advice to know 03 and 02 exams cold. There were a lot of question from these two categories. You may find the following info useful.
There was a Q asking about valid sources for a motivation to combine references. This is directly in 2143.01 (not the latest rev but in rev 4)
A Q about grounds for protest (variation of a repeat). Ans are directly in 1901.02.
A Q about correctness of double patenting rejection when there are combinations subcombs and related inventions. Ans are directly from 806.05 and 806.05(c) (rev 4)
Lip gloss Q: it seems this is NOT public use – she used it for herself.
Mirror Q: This version specifically asked about 112, par 1 rejection. Then the ans is “reflective surface” stated in original claim but not in spec. This is not new matter, but it is a 112, par 1 problem. Facts about mirror changed to reflective surface or mirror not defined as a reflective surface are NOT a problem b/c this is an inherent property. Facts about parallel and perpendicular arrangement can be a 112, par 2 problem but not a par 1 problem.
Q about Examiner’s Amd. Black ink is the wrong ans. It should be red ink.
Hair gel Q (A variation of Apr 02, PM, Q37). Facts didn’t say there was enabling disclosure. So file prior art citation may be the correct ans.
Q on 102(e) dates directly based on Ex. 5 in 700. Ans is the first line under Additional Benefit Claims.
Q about correcting priority in PCT app. You must do this within 16 mos of the CORRECT priority date. Fact pattern says that the date was submitted in the mm/dd/yyyy format but should have been dd/mm/yyyy format. Thus, Jan 4 98 is 4/1/98 and the last day to claim priority is 4/5/99 (May 4, 99). All this was a distraction. Rule also says 4 mos within filing of IA and that date (which I assume was the correct ans) was before May 4, 99.
Q about 102(e) date of PCT app filed b/f 11/29/00. There was an error in address. So the date would be when the address was corrected.
Q about perfecting priority in reissue. I don’t remember this well but there was an issue of a stmt of unavoidable delay.
The following were repeated from old exams:
Oct 03 AM: 9, 23, 26, 36, 44
Oct 03 PM: 2, 13, 21 (some variation), 41, 45
Apr 03 AM: 8, 25 (some variation), 30, 37, 44
Apr 03 PM: 13, 48 (some variation)
Apr 00 AM: 42
I took the exam today and passed on the first try! Most of it was a blur, but here is what I remember:
About 30 or so repeats from 2002-2003.
Lots of reexam, reissue, rce questions
maybe 5-6 PCT (several from the 10-03 exam, but with subtle differences. (Costa Rica/Sweden/German PCT)
Piecemeal
Titanium Baseball
Mirror
Velcro
Japanese Patent
Also, I made a bunch of flashcards for my ipod touch for all of the 2002-2003 exams. if anyone wants to use them, and has the iphone app called flashmybran, or an account to flashmybrain.com, i will post them under the legal section. I cant tell you how helpful it was to know the old questions. Make sure you know all the old questions!
Good Luck!
hi
Please, Can u post them under the legal section in iphone flashmybrain ASAP
Thank u
Hello,
I passed the exam yesterday (2nd attempt) I took the PRG class two weeks ago and it helped me to analyze everything with intelligence.
This site was also helpful, but I recommend knowing how to analyze and not rely on memorization.
-You cannot manipulate the exam question window. So it can be a challenge to read the MPEP side by side w/ the question.
To the best of my memory :
-the adhesive layer question fact scenario was flipped and tested the use of comprising and consisting.
– 3 easy questions on when a PCT filing date is received. (when from 3 German inventor to U.S., 3 inventors from Costa Rica, (this had an answer that implied that Costa Rica was not under the PCT umbrella, which is false)
– 7 questions on changes to Appeal that had been in effect since 2004, so they were not covered in the practice exams
Get comfortable searching with the index and a general idea where to begin a search.
– 5 PCT 102(e) questions. Get comfortable looking at the flow charts in 706.02(f)(1) all different outcomes.
– Combination-subcombination (806.05a,c,d)
– 3 questions on telephone restriction practice
– 6 questions on assignment and inventorship, most were trickier facts than prior exams.
-plenty of 102/103 questions. A few on inherency. The exam had a couple of questions that were very similar in framing and answer choices yet had different outcomes.
-Mirror
For those passed the exam a while ago, how long did it take you to receive the official notice? Thanks.
I passed on May 11, 2009, and a week later I got a letter confirming my passing score from the PTO dated May 13, 2009. Then I got listed in the Gazette one month later as a person seeking registration, and I got my Reg. No. on July 8. You have to be listed in the Gazette for a period of time before you get your number, but the deadline is stated in the Gazette. Once the deadline passes and if nobody contests your registration, you get your number.
However, I’ve read about people that pass the patent bar and then get a letter confirming that they passed, but in the letter the PTO is requesting additional info. If this happens then it will take longer to get your Reg. No.
Passed with PLI first time.. but couldn’t have done it without this site and knowing some of the new questions. Thanks to everyone who contributed. Here is my contribution back:
PTO has stepped this thing up a notch. The morning session seemed easier. Second session had a lot of PCT which i had no clue about.
Here are the questions I got, while I still remember:
Titanium Baseball – It had some advertisement (paper) that they handed over to a museum. I went with as of the date it was indexed.
Adhesive layer question – was asked in the negative, not the way it appears in prior tests – I confirm
Appeal questions
-w/ new ground of rejection – go over this, and know the relationship between examiner and board and what happens here. I wasted time reading all this during the test.
-w/ rejected dependent claims – Answer: had to use Examiner’s amendment or let applicant rewrite b/c dependent claim REJECTION was overturned by the board.
combination/sub-combination – I still have no clue what this means, but you can find the elements in the MPEP.
US/Mexican company w/ 2 Mexican inventors (one which was a resident?) filing PCT in Spanish (there was no time to translate). Question asked whether US office could be RO? I think answer was no, b/c application was in Spanish, not English and there was not time to translate it — therefore the USPTO should send to IB, after payment of transfer fee.
Lipgloss that changes taste with each kiss – answer: i think experimental use ended and she kept using the lipgloss but not telling anyone. A: She was barred under 102(b) for public use >1 year.
Tables on a CD question – i went with the answer suggested on the board that they were not 51 pages since they were 1/2 and also you needed 2 copies.
Easy French priority question, i think his name was “Pierre.” He filed in France, patent issued then tried to file in US after more than 1 year – barred under 102(d) . Tricky b/c they had option to do 102(b) and 102(d) but it wasn’t 102(b) b/c the french application had just published before the filing.
Trade Secret question – don’t remember the fact pattern
Broom Question – with 900 claims. Answer – E, call the applicant
Piecemeal Question – question was easy just look up piecemeal in the index, then go to section. Answer is right there.
2 month rule for office action – answer: measured from mail date of Advisory Action.
Hydrocyclone – answer: the one that introduces a new method
Tom and Jo
Laurel Abbott and Hardy
Bloc Synthetic Z – answer: doesn’t matter since it has other use, relieving pain.
Moon Dust – Easy, answer: no duty to disclose
Parking Meter – answer: submit drawing w/ disclosed matter
Toy Plane with aluminum wings – answer: examiner should maintain rejection. Prior art had entire plane covered with gum wrappers, which have aluminum foil. New invention, that was rejected, had wings only covered with aluminum foil.
Smith / DRAM cell
Protest
Investigating Deceptive Intent
Question with dead inventor who assigned his interest, and died. Company now wants to continue prosecution.
Question about PCT that you had to know how long you can amend the priority. (I think it was 4 months, but not sure)
Japanse PCT – if you file a PCT designating all states but Japan can you later amend priority from a Japanse application / what’s the time frame on that. (no idea)
102(a) question – which prior art could never be a 102(a) rejection: Anwser – applicant’s patent/application, b/c it’s not by “others.”
Make sure you know why those answers are correct ie read those sections of the MPEP. I just memorized the answers and I had to do a lot of reading/searching. Some answers have been modified. There are some new questions to mentioned here so be prepared to search. It’s doable, if you pace yourself and do the questions you know first. Good Luck!
Areas that were tested heavily:
ASSIGNMENT – surprisingly
APPEAL
PCT
Which review course do you recommend? I can’t afford PLI or Barbri the expensive ones. And if anyone selling their old PLI study material, please contact me. I’m willing to buy! Thank you very much
I passed 9/28 on my first attempt. I did not spend one red cent on study materials and do not believe it is necessary to do so to pass. Thanks to the mass amount of repeats, this test is pretty easy if you put in the time. Here is my .02 cents on test strategy:
1. Download this outline (it is really good) and read it over a couple of times.
2. Do ALL the old exams from 2000-2003 at LEAST twice. Not only are you learning the important concepts, but you are memorizing answers, which is key. You are also learning how to use the MPEP search function, which is also key. When the real exam came, I probably looked up answers to at least 30 questions that I wasn’t sure of. You need to be scoring at least 85-90 on each test before you are ready for the real exam. (I made an outline based upon questions that I was repeatedly getting wrong).
3. Learn all the new exam topics posted here.
4. The week before the test, read MPEP chapters 700, 1200, 1400, 1800 and 2100.
That is literally all you need to do to pass this test. As for my particular exam, I had at least 30 repeats from the 2000-2003 exams. The following commonly tested newer topics also appeared:
Tradename – VELCRO
Moondust
Tribell
Japan – 45 days
Wireless Telephone
Amending the PCT Abstract – ISA rewrites
Electric Toothbrush
Death of Inventor after he’s assigned part of invention to his atty
PCT 102(e) file date – Sweden/Costa Rica
Assignee not of record signing small entity claim
Hairgel (the answer was ex parte reexam)
MDC fee calculation
Door knob – means plus function
Titamium Baseball (Prior Art – July 4)
Mirror reflective qualities
Joe Blockhead
Piecemeal Exam
Return of Maintenance fee
Parking meter
misspelled name (Jon Jones)
I had several Q’s on new grounds of rejection by appeal board
I also had a question on telephone calls to FIU
ajclegal, I hope you don’t mind I reply to your comment.
Did you use a hardcopy of MPEP? If you don’t mind, can you share your study experience, i.e., how did you collect the study material? I do plan to study on my own as I don’t have the time and budget to attend any review course. Thank you so much in advance!
I just printed everything I needed off the internet, particularly this site. PLI and Barbri are complete wastes of money for the Patent Bar.
I just found the site the night before the exam. I failed yesterday, with a 65. But I saw at least 10 of the questions from this site on the exam.
(Moondust, piecemeal, door knob, Tribell, Japan 45 days, Mirror, Death of Inventor, etc.) This site is definitely on point.
Now I’m trying to take it again in 30 days before my window closes. For the next month I plan on reading the chapters in the MPEP, retaking all the exams (I had already taken each at least twice). And making sure I know PCT and 102(e).
The first half had alot of that and I think that’s where I slipped up at. But the second half had alot of questions from old tests and topics discussed on this site.
Hello,
I am selling my pbar outline (based on PLI materials) and a hard copy of all exams to 2000. I am asking 45 + shipping if anyone is interested
Hi Amy,
Did you make the outline yourself?
Thanks.
Hi everybody
I am a devout reader of this website and any others that list patent questions, and an aspiring patent agent planning to sit for the bar exam in 10 days. After so many days of preparing, the million dollar question struck me..how is the job market for patent agents in this economy? I have a B.S in Computer Engg and 5 years of work exp. in the software industry. People who have posted that they passed (and if they are trying to become patent agents and aren’t law students), how do you find the scenario?
I think such questions strike at the wrong time, like now when I should be studying hard..have been wondering for a while now, but kept putting the thought away..
thanks !
Hi Ash, good luck with your exam, I’ll keep my fingers crossed for you!
I had passed my test in Sept last year, more an ego challenge to myself – I am 65 years old, an RF engineer of the old class, an MBA since 2006, now a Patent Agent as of Sept 2008.
After I had passed my test, I had sent out a few resumees and applications, had literally phone calls after 5 min, after sending the emails. One opportunity resulted in an excellent side job to my main job a day later, I am working since for that firm on a part time basis.
What I am trying to say: The Patent Agent job market is good, if not even great. Look up INDEED Job opportunities, a great open jobs, new jobs, web site.
Again,
Good luck
Rolf
Thanks so much for the encouragement Rolf ! You put a big smile on my face early in the morning !
You must be a great person, kudos on your passing and your new job ! I shall remember what you said on my way to the testing center.
tnx again
Ash
I really wish to thanks the people who set up this website and those who contribute to this forum. I passed the exam yesterday (Oct18, 2009) in Columbia, MD. It turned out that the over 60 exam question posted here, I encountered 15-17. Among them are:
Lip Gross
Treat secret
Inventor A claim 1-5; Inventor B claim 6-10; Reissue
Correcting PCT Applications
Mirror
Who can sign the assertion of small entity status
Black ink red ink
maintenance fee
Spanish phone
Japanese patent (more than one)
Hair gel
Death of inventor after prosecution
Piecemeal
112 6th para equivalence standard
German PCT
Those questions saved me a lot of quality time during the test.
I started to prepare for the exam from scratch on August 10th 2009 after I bought PLI study material. I firstly spent 30 days to listen to the CD, read study guide, did PLI prime questions and spent the rest days to do old exams. Everyday I invested 4 hours on it,and On weekend I could invest 6 hour a day. In the very beginning, I experienced some hard time understanding the basic. But John White’s CD did help a lot. Yet when I did old exam question for the first time, I was so frustrated. I only got 62% on 2003 Oct test and only had 40 min to check back the marked question 40 days ago. I hang in there, keep doing question..review them.. listen to CD..read PLI guide. doing more exams… I gradually progressed, after ten days, I could finish 2002 exams with a grade of lower 70% and had more than 1 hour to check back. One week ago before the exam, I got middle 70% for 2001 Oct exam with 2 hour to check. Yesterday, I finished both section in 65-70 mins with around 15 marked questions in each section and had enough time to check.
Now allow me to contribute some experience I gained in the last 70 days.
1. Learn the basic and backbone of MPEP. PLI helped a lot, especially for people without pertinent background, John White did save me a lot of time by exposing test preparer most to the part USPTO wants you to know in the exams. Later I also found out the study guide on this website are pretty good and could act as a complementary to PLI, though some chapters are not written in an organized manner.
2. Old exams. Those are flesh and blood for the exam. 2003 exams are most most valuable, then 2002 exams. For 2001 exams, I only did Oct test. If your preparation time is limited. Skip 2001 and earlier exams and focus yourself on 02-03 exams. By focus I mean you will have to go over them 2-3 times. I spent a lot of time reviewing those exams ( it is like you spend 3 hour doing one section, you will double your time reviewing them!). Old exams helped a lot in grasping the point and sharping my MPEP search skills. It turned out during exams 45-50% of questions could found sources literally in those old exams or they are just the obvious variants of the old exams. Another 10-15% question could be found on “exam question” posted on this website. Now think about this: when you go to Prometirc to take exams, among the 100 questions you are facing, only around 35-45 questions are probably new to you, among those new, 20-25 questions would be cold, I mean you could identify answers to them without looking up the MPEP. Now for the rest, 1/2-2/3 of them are warm and are easy to find answers in MPEP without painful reading. Now how many hot questions are left? You do the math.
3. MPEP. John White suggest reading chapter 2100,1800 and 700. I admit these chapters generate about 70% questions of the exams and I tried to read, but you know what, MPEP is not written for people to read (especially not for an immigrant like me!), It is written for them to look up when they feel they need to. So after spending a few night hours reading the boring chapter 2100 word by word, I gave up changed the strategy. Instead of reading inside, I started scrolling down and browsing the heading carefully. Only in some cases I read some details that appeared on the exam questions and answer choices. One mistake I had made during listening to lecture and practiced PLI Prime questions was that I sometimes forgot Patent bar exam is open book exam, I mean that I did not expose myself enough to MPEP. So upon I started to do old exams, I found out it was a huge pain to search.That is why later I started to read heading so I at least I could narrow down my search to a few paragraphs. One thing I need to point out is that old exams usually use the verbatim out of MPEP in their questions choices, which made it easy to find, but in today’s exam. They kind of tried to avoid that, so be aware!
4. The >60 questions posted on this website. If you spend one or two days reading all of them very carefully, you will find that reading will be so rewarding. Again, thanks to those who have voluntarily post those valuable questions.
Forgive my poor English if you find it is hard to read. I meant to help those future test takers no matter they are native or those whose native tongue is not English.
Lastly, I wish to sell my PLI material, I bought it early August 2009 form PLI website for $1800, I am selling them for $500, fair condition. Write to me at lcqdl@yahoo.com if interested.
Sonic
I just got done taking the Patent Bar today for the first time…PASSED! I wanted to share my thoughts in hopes it might help others out as I did read this site and I am sure a picked up a few pointers to help me out. (I got the titanium baseball question!)
I had free PLI materials from 2001 or something. I went through all the mp3s, but I would estimate that it really only covers about 40 percent of what you are going to be tested on. Sorry, that is just the plain truth. I didn’t do any practice questions other than the actual bar exam questions. I highly recommend NOT doing any PLI or PRG or whomever practice questions because it is completely pointless. They either are too easy or cover material you aren’t going to tested on, and furthermore, they will trick you into a false sense of security on the exam and give you a shock when you realize how difficult the real exam is. You should be taking actual bar exam questions because that is what you are going to be asked and you might recognize some, which means FREE POINTS and a huge time saver.
I took the last 8 exams, so that is 800 questions. I reviewed these exams and made notes of the questions I missed and why. I did see several questions repeated, but not as much as I thought I would. Maybe 10-15 questions were repeats. However, the new questions definitely were asking about similar subject matter. Some repeats were hard to spot, as in the stress of the exam you can’t quite tell if it a straight repeat or they changed it up a bit. One question I did have was the Potter question. I read Potter and immediately skipped the question and looked for the answer with “commonly owned” it in and just moved on. Literally didn’t read it because it was pointless to waste my time trying to understand it again. Just saved 4 minutes dealing with that ridiculousness. For instance, if you have to do some massive claim counting of multiple dependents and see 147, just select it and move on. Saving time is key to do searches for other questions.
I never read 600, 700 or 2100…waste of time. You need to know how to search it, not read it. The answers are so nuanced you can NEVER learn it. I was flipping between screens trying to figure out which answer they switched a “can” or “cannot” from. You need to be able to find the answer and then compare it to the text in the MPEP.
You also need to be HIGHLY efficient at looking things up. It was a racehorse, and I literally looked up 20-30 questions for the answer. I would say I found the answer on maybe 17-20 of them and then just guessed at the rest. I ended up with about 15 minutes left over each section and ended up changing about 5 of my answers based on the new searches I did. That could have saved me.
Basically, you need to spot old repeat questions so you can not only get them correct, but save time for other questions. Also, the search function on Adobe is a bit pathetic, you have to hit the OPEN button after you have already selected the MPEP section or else it doesn’t allow you to do a search or view the new text. I kept screwing that up in the first half an hour.
Some questions I remember….I am purging my memory as I type….
– I had about 7 PCT Qs and a bunch of Appeal questions. Surprisingly not many questions on consisting versus comprising and multiple dependents and so forth.
– Potter (Thank you…moving on…saved four minutes)
– Lip Balm with fruit and vegetable flavors
– Moon dust Question (Thank you…moving on…saved 2 minutes or so)
– I do remember some Piecemeal question being asked…doubt I got it right…had no clue.
– Trade Secret question?
– A question on too many dependent claims and what to do. Multiplicity. I looked up the answer and found it saying how the examiner should CALL you on the phone and ask you to basically make a selection. Would have gotten that one wrong if I had guessed rather than looking it up. You need to be able to search effectively!!!
– Japanese patent…failed to rescind the nonpublication request…answer 45 days. (Thank you…moving on…saved 2 minutes)
– Titanium Baseball Question…shown to the private people first….thanks guys! Got one right from this website…and that may have made all the difference!!!
– Parking Meter
– I did get a Broom Question where they try to patent the handle and the bristles or something….it is a blur already….
– I did get the Tables question where there are 52 tables and you need to look up the answer and see that you need 2 CDs and that only if any individual table is over 50 pages or if you have more than 100 tables can they be put on CDs.
– Pierre Question
– Hydrocyclone Question….I surely got his wrong. Oops. This is funny, I remember knowing that I had it before, but I just couldn’t figure it out quick enough and guessed wrong and moved on and failed to come back to it. Questions like this you should just memorize and not waste you time with it. See, you don’t need perfection…just 70%!!!
– Toy Plane with Al wings
– I got a question, which was tough, about whether the PTO will investigate fraud allegations when coming from a reexam, a reissue, or a protest. What sucks about this question is that you had to jump around to different sections and do searches to find whether the PTO would even look at a fraud allegation. The answer I think was in a reissue, where the PTO won’t normally look at, unless it comes from a decision from a prior court ruling concerning the same patent, and sure enough the facts had this exact scenario laid out.
– Adhesive Layer Question…got it wrong when I originally took it, got it right on the test! Thank you…moving on…saved 2 minutes.
– Melting Question where the invention melts at a lower temp and the best answer is the one with the affidavit. Just spotted it, remembered it and found the answer. Thank you…moving on.
– I remember several questions on obviousness. You need to know how to get around it and what the examiner can and can’t do.
Another tip, I also folded my scratch paper and then flattened it back out to make a huge chart so I could mark all the questions and answers. Taking a test on computer sucks because you can’t just scribble out the bad answers, and then you forget which ones you already canceled out. I actually did this during the review of the computer usage in the morning, so I didn’t waste any test time. Then, come back a bit early to the exam and do it while you are still on break. It totally rocked and saved me a bunch of times. It is just plain smart.
So to sum up, do OLD QUESTIONS, memorize the unique ones because you will surely see them repeated and save you time. Also, you MUST be able to look things up fast and efficiently. And don’t panic…I almost did as it was a tough test. Not to brag, but I am about as smart as they come and I thought the test was EXTREMELY difficult. I tell you this to be honest and not to scare you. I even have filed and got patents granted on my own inventions, so I have actually done this stuff in real life and still thought the test was hard. In fact, I thought I failed, I had to read the screen three times to make sure it said I passed! Yippee!!!
By the way, if you fail, no worries, take it again. This test has absolutely NO BEARING on whether you will be a good patent attorney/agent or not. It is like hazing, you have to pass their ridiculous test to be part of the club. Unfortunately you have to play by their rules. Good luck to the rest of you.
I’m a little confused by something. Continuing applications and regular applications where a provisional has previously been filed must include a cross-reference to the parent, and you must also make a claim for priority within 4/16 months? Does the reference to the parent not establish priority? If not, what is its purpose? Thank you!!
passed today! 10/21/09 first time. i’ll share the questions i got, at least the ones i remember.
mirror – chose answer E, parallel/perpendicular. dealt with 112.
PCT – sweden and costa rica both showed up. same fact pattern, same answer. forward it to IB and filing date is date filed in US.
japan – 45 days is answer.
piecemeal – answer is all of them.
broom – telephone call is answer.
spanish phone – answer was “c”, 102D will kill the CIP.
advisory action – answer is 2 months from date of AA.
PTO-892
difficult best mode question.
several death of inventor questions.
a lot of assignment questions for some reason.
a lot of appeals.
i basically memorized 2002-2003. i only reviewed the 2000-2001 questions that were on the “Repeated questions’ section on this website.
this website helped me get 5-8 freebies. 2002-2003 probably got me 20 more.
I am about to take the exam and want to know more about search methods in Acrobat Adobe. Any suggestion and tips are greatly appreciated. Thanks,
Jen
Took it today (10/26), passed… thank goodness, don’t think I could go through that again. I found the computer to be incredibly painful in comparison to what I was using in practice tests. The screens seem to be good, seems to be a software issue, both the test and pdf screens were horribly blurry. And I found the search to be very painful. In general, I was counting on fast lookups, and they took a lot longer than when I had been practicing… but I guess it was good enough.
The list of questions from recent exams were good, thanks everyone – took some notes, when I collect my thoughts will post the ones I remember as well. I did the list of ~60 “newer” questions on the site, Oct 2003, Apr 2003, and Oct 2002 (all once). Saw quite a few repeats – but in some cases couldn’t remember it right off, so had to go through lookup anyway…
Mark
Passed. I really appreciate this website and all the guys who shared their experience.
I used PLI and this website and the websites that this website links, and read some chapters of MPEP (600, 700, 2100, 1200, 1400, 1800, and 2200) as well. Knowing the tests 2003-2002 cold is very helpful. “Exam questions and concepts” on this web gives me some freebies.
Regarding the test, in the morning section I had 40 mins left. In the afternoon, 1 hour left. Some questions are not verbatim, but easy to find in MPEP. Some repeats from the old tests.
Here are the questions I can remember.
– 102 rejection may be: more than one references … 5 choices, which one is right
– Protest submitted after publication date
– Hair gel and shoe polish, same compound, different use
– 5.5-7.5% Ni, 7-11%Mo, disclosure 9% is the perfect, prior art 6% Ni, 8%Mo, how to overcome
– PCT German last day ->fax
– PCT prior to Nov 29, 200, what is the prior date for 102(e) publication.
– Lamp-clock, dimension/size
– Reissue: after certificate of correction, reissue should not underline what CC did.
– Appeal new argument/court decision
– nonobviousness double patenting, assigned, who can sign terminal disclaimer
– Two applications, same subject matter, not commonly owned, not same inventors….. less than one year… options are obvious double patenting/statutory double patenting/double patenting/102e rejection/none -> 102(e) rejection
– Appeal: board affirms claims1-7, reverse claims 8-10 -> the examiner rewrite 8-10 or set one month to have the applicants rewrite.
– Combination/subcombination question -> 806.05(c) verbatim.
– 119 (e) and 120, where to claim the propriety -> the first sentence of the spec or ADS
– Laminate adhesive layer variation, overcome 102(b) rejection: comprising or consisting
– wireless phone 102(b) rejection -> experimental use
– A applied provisional app 1 (date1), ABC applied provisional app 2 (date 2), A applied nonprovisional app1 (date 3) claimed priority of provisional of 1 and 2, ABC, applied n not remeberon provisional app2 (date 4) claimed priority of provisional 1 and 2, but date 4 is over one year from those of provisional 1 and 2, a prior art is on the date before date 1 (or between date 1 and date 2, not remember clearly). Question seems to ask what is proper?
– one tough question: After final rejection (no date), filed the Notice of Appeal on 10/21/2001, on 4/18/2002, file continuous app and also tell if there is extension time needed, the Commissioner can charge the fee in the deposit account, today is 5/1/2002, the question asked what is proper/improper by today. The answer options are
A. … proper…
B. not proper … (mentioned 5 months).
C. The Director extends the time, the Commissioner does not extend the time.
D. not proper …
E. proper…. (Mentioned separate paper needed for the different matters …and there is 6 months….)
– some 103 obviousness Qs, some 102 Qs, some Advisory Action vs SSP Qs, best mode Q
I also passed on my first try yesterday. This website was a tremendous help. Even though, I took PLI course, that probably would not be enough. While it is true, that appeals and PCT chapters are still being tested heavily, I was prepared for that. I want to thank everybody who posted messages in the past. That was very helpful. For all of you, who are taking the exam in the near future, I would recommend to practice old exams as much as you can + “newer” questions on this website. Also, you need to know important concepts such as anticipation, best mode, Graham factors, etc. I only remember few questions that came up:
mirror – chose answer E, parallel/perpendicular. dealt with 112.
japan – 45 days is answer.
spanish phone – answer was “c”, 102D will kill the CIP.
difficult best mode question.
Death of Inventor after he’s assigned part of invention to his atty
a lot of appeals.
102 rejection may be: more than one references …
combination/sub-combination
102(e) prior art questions that dealt with international applications
Claim counting – Ans 147 10.03.#50AM.
Step for crossing- 10.03.#23.AM.
Action after 2x rejection – 2Q 10.03.#42.AM.
Appeal- 10.03.#38AM and read MPEP 1214.06 Examiner sustained in whole or part and expect to be heavily tested on this concept.
102d- 10.03.#8.AM
Enablement- 10.03.#18AM
Anticipation- 10.03.#7PM variation
103 obviousness- variation but same concepts-10.03#16PM
Jon Jones Design variation- choice (c) not there-10.03.#18PM
Oath/ADS and address/citizenship-10.03.#22PM;#43PM
Certificate of mailing and foreign country concept-10.03.#34
XYZ assignee and divisional concept-10.03.#38PM
Prima Facie concepts drawn similar to 10.03.#33PM
And also read MPEP 2142 ‘…Basic Criteria’.
Good luck to all of you and if you will study hard, you’ll pass it too.
First thanks to all here. I passed this week. This site was a BIG help. My strategy: Read through 90% of the MPEP (though I didn’t read PCT & Paris Conv. Appendix). This was much more than necessary to pass. I went through the April 03 test un-timed (read, answer, then looked up answer), studied up on sections I needed, made a 102/103 table to help memorize, took the 2002 tests timed and then the April 03 test timed and then the Oct. 03 test timed (to give me a good indication of how I was doing), then the April 03 test again. Made my own test of all the answers I have ever missed plus the 2000-2001 questions that were reported repeats. In all about 5 weeks at about 60 hours/week (though I had a head start having filed about 14 non-provisionals pro se and having read through Patent it Yourself).
ALWAYS be sure to read the answers as to why the other selections are incorrect. This is great insight as to how they write the “tricky” parts into the questions and helps you remember the correct answers. Along the way, make 1 sentence notes each question you miss after the first test. This is a quick reference study sheet that is much quicker than going through the entire questions again.
Second, I wanted to try and help future test takers by proposing that there be a file/section on this website identifying the questions that are no longer good questions/valid with regards to using E8R4. When I was taking the practice exams, I got hung up on quite a few questions because they didn’t correspond to E8R4, which threw off my time. It would have been better to practice having omitted those questions. Some of the questions have been noted in the answers (“All answers were accepted”) but it is better to know that ahead of time. Below are some of the questions I have flagged and comments (I expect there are more out there):
Test Q# Issue
10/15/03AM 2 All answers were accepted
10/15/03AM 30 Answers B or D were accepted
4/15/03AM 25 See MPEP 1211.03 1st paragraph “Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP § 715.09, § 716, and § 716.01. >If such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.” Thus D is also incorrect.
4/15/03AM 28 Bad question as noted in the answers
4/15/03AM 31 I personally think this is a bad question because as I read it, non-English language documents do still require “Verification of the document”,( 37 CFR 1.495(f)) which would probably be in a statement by a translator. I think it is unfortunate that they USPTO still uses this question (I had it on my test), but knew to put down “none of the above.” I understand that there used to be an official “verification statement” required for some things, but this isn’t necessarily obvious to new test takers.
4/15/03AM 45 37 CFR 1.193(a)(2) does not exist in E8R4. From 37 CFR 41.39(a)(2) and (b). , it seems quite permissible to enter a new ground of rejection and what the course of action is for the applicant. (I’m not sure what was in 37 CFR 1.193(a)(2).
4/15/03PM 43 Bad question as noted in the answers
4/17/2002AM 12 According to E8R4, a patent from a national stage application from an IA (filed prior to 11/29/2000) is accorded a 102(e) date as of the date it fulfills 371(c ) (1)(2)& (4) as in MPEP 706.02(f) (Example 6, and Section III flowchart). Thus, the correct answer should be (C ).
4/17/2002AM 34 The answer is supposed to be (E), however in E8R4, the proposed drawing correction practice has ended and the drawings no longer need to show changes marked in red as described in MPEP 714 II (D.) (last paragraph on page 700-219): “No proposed changes in red ink should be submitted. Any proposed drawing corrections will be treated as non-compliant under 37 CFR 1.121(d).
4/17/2002AM 39 The filing of CPA’s for utility applications is not proper in E8R4, thus this question is improper.
I hope this helps,
Inventionist
Hi folks! Congrats to those who passed their Patent bar exam. I see quite a few people have posted about their successful passing of the exam in the last few days. I am wondering if any one is planning to sell their PLI study materials? I have only recently finished grad school and cannot afford the royal sum of money for the course! Please keep me in mind if you are! Thanks! newrhythms90@gmail.com
Hi Newrhythms
I passed the exam today, just a few hours ago. Had a great experience, thoroughly enjoyed taking the exam. I am looking to sell my PLI material (unmarked) and notes that I made (from patentbar.com’s 60 questions) for $650. Contact me if you are interested. ashwinya@gmail.com
Will post the questions that I encountered tomorrow.
Ash
Hi All,
I see in a lot os answers to old exams it refers to documents with numbers such as 65 FR 50092. What are these documents? Do we need to study them for the exam?
Thx,
I passed the exam on the 5th in Albany,NY. The AM session had a lot of new questions, surprisingly mostly from chapters 300 and 600. The PM session was a breeze. Overall there were many repeats from 2003 and also a bunch from this website. A big thank you to everyone who contributed. I figured I should extend the same courtesy to future test takers, so made an extensive list of qs that I got. If you need to discuss any of the new Qs, please ask.
Known ones
1. Mirror – Parallel/ perpendicular
2. Tribell
3. Moondust
4. Piecemeal
5. Velcro
6. J.J.Smithy
7. Jon Jones with answer corrected filing receipt removed, replaced with
ADS
8. Titanium baseball
9. Tommie and Jo (diff version tho’)
10. Actual reduction to practice success
11. Design patent 6 month priority – Ans : Aug 6 2003
12. Appeals – 1-5 rejected, claims 6-10 allowed
13. Appeals – Application abandoned bcos board rejected indep claim 1
14. PCT – 102(e) date for patent filed pre – 11/29/00 I chose N.S date
15. PCT – 102(e) date for IA with prov and non-prov priority -Ans :non-prov priority
16. PCT – Fax question
17. PCT – German filing , published in German, not in English, I chose No 102(e) date
18. PCT – 2 Qs Costa Rica , Sweden similar fact patterns
20. Buzzcuts/Hairgel
21. X-Y-Z composition for growing hair
22. PCT – ISR one month invitation to comment on abstract
23. Best mode – chose the one which said there is no need for the inventor to point out the embodiment he considers best, if he has mentioned a best mode
24. Small Entity status signature – w/o establishing ownership
25. Who can sign TD? when there are 2 inventors, 2 assignees with 40% each of share ..The answers were framed in such a way that there was only one right pick -the applicants. The other choices included one applicant, one owner, etc, which didn’t seem right.
26. Attorney of part interest can take over deceased inventor’s application prosecution
27.Door handle
28. Crossing a road
29. 147 claim counting
30. Benefit claim deletion – translation not necessary
31. Issue fee transmittal form
32. Combination/Subcombination
33. Protest after pubn – sole Japanese patent/articke
34. 102(b) anticipation – nonanalogous, disparages, teaches away. Ans : None
35. All can be prior art under 102(a) except : invention by the same inventor
36. Barry Foreman obviousness
New ones
1. Appeals – Board’s new ground of rejection – 3 Qs
4. A question about FIU
5. A Q about NIRC (Chap 700)
6. Interview -All except, Examiner cannot call before attorney does, for invasion of privacy. I chose this as it seemed odd.
7. CPA cannot be given Cert.of mailing
8. Prov. appln cannot have a continuation
9. Which is true? Drawings/formal/informal/ B& W – I chose B& W cannot be considered as formal drawings
10. 1.105 Duty to disclose
11. Exparte Reexam cannot be based on anything other than prior patents and publications.
12. Reissue appln needs Spec, claims, drawings for filing date
13. RCE and IDS submission w/o any other attachments can be submitted when?
Choices were
1. Before non-final action
2. Before notice of allowance
3. Before issue fee is paid
4. Don’t remember
5. None
I chose None. I doubt if that is right
14. CIP -first sentence should include priority claim to parent
15. 102(f) – Doesn’t need subsequent effective date – this was a very interesting Q.
16. Examiner’s prior knowledge in the art
17. Examiner’s stt in Reasons for allowance not needed when : Applicant compiles with 1.133(b) & something else – Another interesting Q.
18. Missing mailing addr in declaration for inventor B. Everyone can sign supplemental Except ? I chose the one with all inventors A,B,C ..looked up MPEP 600.
19. There were many Qs about claims and Spec from 2100
20. Sally is a patent owner. Against another patent she may file anything except :
Choices were
1. Reissue
2. Reexam
3. Protest
4. Prior art citation
I chose Protest bcos that can only be against a pending application, not an issued patent..Dunno if this is right
21. Amendments needed after notice of allowance. How should applicant file to extend patent term?
I chose file amendment before issue fee is paid .Didn’t chose the option with RCE as RCE would result in patent reduction (PTA). Again, not sure.
22. Which is false? Ans: Exparte reexam need not identify real party in interest
thanks again folks !
hey,
If anyone has the outline from Longacre Patent Bar Review course, we can chat at devenp@gmail.com.
Thanks
DP
I passed the exam yesterday. Initially I planned to read sections 700, 1200, 1400, 2100 and App R once or twice each. However after skimming App R and sections 700 and 2100, I realized it would be pointless for me. So I just took a week and a half or so and worked through the old tests from 2000 through 2003. In doing so I looked up every answer and reviewed the explanations if I had any doubt as to the correctness or incorrectness of any of the answer choices. By the time I finished working through the October 2003 test, I could find almost anything I needed relatively quickly. The only other thing I did in addition to working through the old tests was to memorize all of the elements of the 102 provisions.
I encountered a number of old questions including Tribell, Smithy, “means for opening a door”, Jon Jones with the new answer choice, mirror parallel/perpendicular, appeal claims 1-5 rejected/ 6-10 allowed, and a bunch of PCT filing questions (costa rica, Japanese app, Swedish inventors). I wish I could remember more, but I can’t off the top of my head.
I first started my test prep by reading this site, so I thought I would post the little bit of info I had.
My test center experience was great. The monitor was a decent sized LCD. Moving from question to question was quick. Moving from section to section and searching the MPEP was better than on my personal computer.
Passed the exam today. The facility itself was excellent; very quiet and the equipment was top notch. 19″ LCD’s with Core 2 Duo PC’s, and the testing application itself was very speedy. One thing that threw me was that you couldn’t use key commands (Ctrl+C, Ctrl+V) for copying and pasting words from the questions, which I was used to doing this for looking up things in the MPEP. Also, it seems that searching through the MPEP. It also wouldn’t let you specify where you wanted to start your search from. If you opened up a new chapter of the MPEP it would always start from the beginning, and it would always start you off where you finished off your last search in the chapter if you kept that chapter open. This was a bit painful for me since I was used to scrolling to a section and searching that section specifically (example, I would open chapter 1200 appeals and want to search 1206 for when you could file an amendment after the appeal brief had been filed, but it would make me start searching from the beginning of the section).
My particular test focused A LOT on appeal. I figured there would be a lot on PCT seeing as the market place is going global more and more, but not so much. I had maybe 5 or so repeats, all from 2002/2003 exams.
I don’t want to take the wind out of this website at all, but I can absolutely attribute 90% of my passing to freepatentbar.com’s exam simulator. The real exam was exactly like this (except for the key command shortcuts), which made nothing on the real thing a surprise. It was perfect for being able to track my times and results every time I retook the exams. This website was excellent for tracking the new questions on current exams and for summarizing the MPEP concepts (ESPECIALLY the PCT bits). I highly recommend registering for the exam simulator on the freepatentbar.com website and taking the 2002/2003 exams over and over (I took each section 3 times) until your score 90%+ on each of them. This will get you used to searching the MPEP and you’ll have the repeat questions memorized which will save you some time on the real thing.
I started my preparation for the exam back in February this year. I went into this dead cold in patent law. I’m currently a Project Engineer and, at the time, had zero knowledge into patents. My advice, if you’re starting out cold, is to get the book “Introduction to Patent Law” by Mueller. The summarization study guides on this website and freepatentbar.com and be quite intimidating and overly dry if you’re just starting out. This book is excellent for bringing you up to speed with the core concepts and acronyms used in the USPTO. After that, go after the study guides and exam simulator.
I wish you luck!
What is the best way to study old exam questions? I’m getting close to the end of my PLI course and am getting ready to tackle the old exams. I know this is a big part of a successful study strategy, but I’m not sure how to approach the questions because I’m worried that I’ll memorize questions and answers, and then the questions on the test will have a slight change in the fact pattern or answer choices that will throw me off. Do the test writers do this or have old questions really been word for word repeats? Thanks in advance for the help! I’m glad to see that there have been several success stories lately!
Could anyone tell me how to find 66 F. R. 1099?
Thanks.
Keith
You don’t need to know the F.R. Focus on the USC and CFR sections, which can both be found in the MPEP.
Thanks,
Keith
Hi,
I passed the patent bar my first time using this website and the PLI Patent Bar review materials. If you are interested in buying the PLI materials (books, cds and DVDs) I am selling mine for $600. You can get them through Amazon here:
Or just email me directly: erikcsmith @ gmail . com
Good luck on your studies!!!
Erik
===THE BEST WAY TO PASS===
(1) Review all exams between 2003 and 2000 until you can answer each question by memory (as much as possible w/o reading the question). Most of these will show up as repeats.
(2) Review all new questions posted on this website. Put the questions/answers/MPEP sections into an Excel spreadsheet. Break them down until you can recognize the question by memory (just like the old exams above).
(3) By doing steps (1) and (2) (and reviewing the answers/studying relevant MPEP sections), you will become familiar with the MPEP.
(4) Do this until you can’t stand it anymore – you will pass.
Passed! I took your advice and others’ in this site. Thank you.
I just passed today. The morning section was shockingly difficult in that there were very few repeat questions (maybe 3 or 4) and many questions on obscure topics (drawings, third party submissions, nonobviousness). I had to do alot of searching and practically ran out of time.
The third party submissions was really confusing, but I picked the answer with no fee.
The drawings question looked familiar (similar one on an old exam but this was a variant). Choices such as “informal drawings.” Don’t remember what I picked.
The afternoon was much better, many repeats (around 10). Certainly a number of PCT and appeal but not as much as I had imagined from reading this site. One thing that was helpful was reading how applications not in english submitted to the USPTO will be forwarded to the IB. I did lots of searching in Ch 2100.
A question I’m not sure about – first filing in australia, sought stage II at the IB, then within 30 months sent in spec/fee to the USPTO. i choose the answer as abandoned, since a copy of the application must be filed. however, it’s possible that stage II qualified the IB to forward your app to the USPTO… really didn’t have the time to find out.
Repeat q’s I saw:
– 45 days in japan
– tribell
– a number of small entity status
– returned maintenance fee
– means plus function door handle
– piecemeal (saw this on here, picked the recommended answer E!)
– 103/102 rejections
– a number of restrictions
I took the PLI home course, studied half heartedly for 1.5 months and pretty hard for 2 weeks. Did all the 2002/03 exams and looked over this useful site. Good luck to all!
I passed a couple of days ago in my second attempt. In my first attempt I got 68, I mainly focused on PLI materials and just spent few hours on this website.This time around I really went through this site specially focusing on recently reported questions and and exam concepts. That made the dofference! Thanks to the OWNER of this site and EVERYONE who contributed.
Questions that I remember:
Mirror (paralle/perpendicular)
Velcrow
Piecemeal
Electric toothbrush
Jon Jones (ADS to correct typo)
Door handle
Titanium baseball (publication)
2 Inventors assigned 80% each to a company; Who can sign reissue oath?
Trade secret on reexam
You have only numerical identifiers of a pending patent, Can you get the status?
Nonprovision patent application filed without claims; How can you keep the filing date?
The board affirms all of examiners rejections and issed some new grounds of rejections. Agent brings up arguments to succsessfully address all the rejections. What happens next?
If I remember anything else, I’ll post later.
Good luck to everyone.
Hello
Does anyone know where I can find a list of the countries which require publication at 18 months?
This is in relation to the Japan 45 days question.
Thanks.
Hello
Does anyone know where I can find a list of the countries which require publication at 18 months?
This is in relation to the Japan 45 days question.
Thanks in advance.
I have been looking at this website routinely for a couple of months and am thinking about finally taking the exam. I would really appreciate a couple of questions answered before I dive in:
1) Do I qualify to take the exam and am I marketable? I have a BS in biology and am finishing my phd in Biochemistry, I have no law school experience.
2) Is PLI the best study material other than this website and old exams?
A bachelor’s in biology should qualify you under option A, so you should have no problems getting accepted to sit for the test.
As for the study material, that’s really a matter of personal choice. I didn’t purchase any study materials, and I passed on my first attempt by just studying the MPEP, the materials on this website, and taking the practice tests over and over again.
Can anyone clarify about the passing grade for this exam, is it 63 (70% of the 90) or 70 (70% of the 100)? When I receive my grade on the computer after the exam, will it have accounted the 10 non-graded Qs?
If so then why isn’t 68 a passing score? scroll above to Itoo Passed’s Nov. 25th posting: “I passed a couple of days ago in my second attempt. In my first attempt I got 68, I mainly focused on PLI materials and just spent few hours on this website.”
Thanks,
Itoo will Pass…
The passing grade is 63 out of the 90 graded questions. The other ten do not count. Therefore, you could get a 68 total score, but if more than six of those you got right were beta questions, you do not get 63 of the 90 correct, and you do not pass. The best bet is to think a 73 is passing. If you answer 73 questions correctly, then you necessarily answered 63 of the graded questions right and passed.
When I took the exam, I was never told how many I got right or wrong. After the exam, I got a message that I had preliminarily passed the exam, and a month later, when I got my official results, all I was told was that I had passed. Maybe you only find out your score if you fail it?
Yup, you need 70% out of the 90 questions, i.e. 63 correct out of the 90 graded. This is made clear in the OED information.
Thanks to everyone who posted on this website, I wouldn’t have passed (mid-November) without it. Got a number of repeats (maybe 15 or so) that were verbatim, coming from the 00-03 exams or the questions section. Most of the other questions were really hard – a lot on appeal and PCT.
Just a few suggestions. Don’t waste too much time with review material – it was helpful to get an overview of the concepts but won’t really prepare you for this test. Don’t wait too long to start doing the old exams and questions. I got started on them just a month in advance (with a full-time job at the same time) and wish I’d done so sooner. Do get comfortable with searching the MPEP because you’ll need to be familiar with the chapter contents and being savvy with keyword searches will help. And of course, most importantly, read through people’s posts on this website b/c they know what they’re talking about.
Best of luck!
Took the test today and passed. Its really not a hard test, you just need to do plenty of practice questions ahead of time to get the major concepts down (102, 103, 112, Appeals) and learn how to search the MPEP. The bottom line is that every answer is right there in the MPEP, so its just a timing thing.
Compared to the bar exam, particularly the multi-state portion, the patent exam is a breeze. I still don’t understand how the pass rate is below 60% on this bad boy. That said, it does help immensley to have experience in patent prosecution (I worked under my boss doing pretty much everything (drafting, responding, appealing) for a year before studying for the test.
How many times can you take the exam within the 90-days window? When I asked USPTO, they said one time only. Is that true? I like to be able to take it more than once, in case I don’t pass the first time. I know I have to pay Prometric for it. But does USPTO restrict the test to only one time within 90-days? Thanks
When you register for the exam, you get a 90 day “window” to take the exam. You schedule the exam through Prometric. You can choose to take it on day 1 of the 90 day window (unlikely, since the availability of test dates at Prometric is usually 2-3 weeks out). If you pass the exam, you are done. If you fail the exam, you have to wait 30 days before you can reapply with the PTO (and pay the registration fee again).
yes— scheduling the exam is nearly impossible. Do it ASAP.
I called them today and they said the same thing that I can only take it once during that 90 day window, if however, should i choose to take it again, i have to reapply. i am confused, i thought i can take it after 30 days without reapplying but by simply re-registering with prometric.
Left a msg with the OED legal assistant, hopefully they’ll get back to me.
DP
Please post on here when you find out. I have to reapply soon unfortunately.
Hi,
I passed today on my second attempt. The first time I got a 68, which was literally a month ago. I didn’t want to let too much time go by before I took it again. They were very fast with my second registration and I was allowed to take it right away (after the 30 day window) If you do fail and get a similar score the first time around, I highly suggest taking it again as soon as you can. The questions were VERY similar to the first time I took it. The first time I spent bascially all my time on old exams and looking at this site. This time around I just spent more time becoming familiar with the major concepts -definitely get an overview of the appeals chapter it saves time for looking up questions – i’m not sure to what extent this helped except that I felt so much more confident on the test. It didn’t feel like i had simply memorized a bunch of questions. I also took the PLI course back in May, but I don’t think that contributed much except to gain exposure to an unfamiliar field.
I’m going to post the repeats and questions from this site that I encountered, but I think it’s really important that you take the reported questions with a grain of salt – basically just know where in hte MPEP you have to look if you see the question, don’t necessarily rely on other people’s answers
I didn’t see that much on appeals or PCT (although the ones I saw were confusing and repetitive), I saw a lot on re-examination surprisingly
I saw a lot more repeats this time for sure, mostly in the morning session:
Repeats:
Bond 60%C and 60%D
april 00 am 47
apr 00am 42-102(a)
apr 00 pm- 102(f)
Tommie and Jo variant
hair gel question- ex parte re-examination; it was the football pad one on a previous exam
japan/nonpublication request
mixture y
lancer
147 claim counting
DRAM
102(d)
Tribell
moondust
parking meter
door handle
there were a lot more, but those are the ones that come to mind – its a huge help knowing those questions because you are sure of the answers
of hte new questions i saw
trade secret
I saw 2 questions regarding Germany and PCT to determine 102(e) dates – one was pre-AIPA the other was after
costa rica
sweden
velcro question- the answer is the last one – reject based on being indefinite
how to petition a maintenance fee? i had no clue
my terminal disclaimer question was different – the answers were like “only the inventors have to sign” or “co. A. and co.B must sign togther” – i really wasn’t sure i put only the inventors but it definitely could be wrong
piecemeal
amending the abstract
I can’t even think more right now.
The Omniprep web site, as of 12/21/2009, recites “PROVEN 98% pass rate.” Not only is this not true, but this is deceptive, misleading, false advertising, and probably fraudulent and criminal.
As pointed out above, Omniprep offers a refund if you take their course but do not pass. They claim that only 2% of students have requested a refund because they did not pass, and therefore conclude that everyone who did not claim a refund had passed the test. What kind of flimsy evidence is that to base such a claim? And then they have the gall to call this a “PROVEN 98% pass rate”!! Do they think that we’re a bunch of idiots?
The truth is that the Omniprep pass rate is less than 98%. I know people who took Omniprep, failed the test, and did not claim a refund. Therefore, when they are factored into those who claimed the refund, the Omniprep pass rate is less than their “proven 98%.”
There are many reasons why those who do not pass the exam also do not attempt to claim the refund. For example, maybe they did not what to go through the hassle of getting the refund. Or maybe after enrolling in Omniprep the student decided not to take the test (and therefore did not pass). Or maybe after failing the test they simply forgot that Omniprep offers a refund, and therfore did not try to claim one. Or maybe they felt that even though they did not pass, Omniprep did provide some materials and instruction and that it would be unfair to get them for nothing and thus did not claim the refund. Or maybe they were too embarrassed to admit that they failed and did not file the claim. Or maybe they want to focus on the future and find ways to pass, rather than spend time to collect the refund and reinforce the idea that they failed. Or maybe they lost the receipt or proof of payment and thought it would be too much of a headache to try to collect it. There are many other reasons why someone who did not pass also did not try to collect a refund.
I can’t count the number of times that I have bought something and later found it to be defective, but I did not try to get a refund even though I was eligible to do so. It is one thing for a consumer to elect not claim a refund even though he or she may be entitled to do so. But it is wrong for the supplier (Omniprep) to assume that the product is satisfactory (passed the test) because a refund was not claimed and then to mislead and deceive the public by calling it “PROVEN 98% pass rate.”
In any event, I was considering enrolling in Omniprep. But no way after seeing this deception and false advertising.
Down with Omniprep.
Well I would agree that whomever runs the show at Omniprep is arrogant with this 98% proven pass rate, which I don’t believe. But so what, if they improve your chances of passing and they are relatively inexpensive, then it’s worth it.
I passed… beforehand I was worried that I would have to take another 6 hour test if I failed this. freepatentbar.com, mypatentbar.com, and patentbarquestions.com helped a lot. With everyone contributing information, I think that is what helped me pass, so I figured I could say what I remember…
Two items for you: New Questions I can remember and Repeat questions I can remember
New Questions
1. A question related to 3 inventors A, B, and C on a pending application. Applicant discovers the ADDRESS is incorrect for Inventor B. How do you make an address change on the application? (one inventor may be unavailable, and these answers are just surmises)
A) Assignee of entire interest sends in an Application Data Sheet correcting
B) 3 inventors declare oath with correct addresses
C) Send in notification of Inventor B’s address
D) Assignee declares oath with all the correct Inventive Entity info
E) Assignee signs a petition under some number naming all inventors A, B, C declaring all inventors and identifies Inventive Entity
2. What amendments after final can be entered during appeal?
A) Amendment after 3 months
B) Amendment after 4 months.
C) ?
D) Some item that is oddly worded about it being sent to the board and the examiner confirms the reply brief, that is very similar to wording in MPEP ( I thought I saw it in 1200, but I can’t find)
E) None of the answers.
I answered E…
3. Some poorly-worded question asking which is true regarding reissue
A) (one of the answers related to Dependent claim [ENLARGED]) A reissued dependent claim omits a Original Claim Patent Limitation and an Independent Claim is …
I answered E) none are true
4. Many many variants of International Filing Date and non-US-nationals applying. Like 6 questions! Costa Rican’s ,Swedish, Mexican. One was an application claim to a foreign priority that claimed a provisional US application. What was the filing date? I answered The filing date was the Provisional given the time constraints and because it was filed in the US. Another question asked for a 102(e) date of an application that predated November 27th 2000 (1999?). I answered None.
REMEMBER: A PCT application filed that s not written in English or does not having any US residents as inventors that is designating US as Receiving Office, is accorded the filing date the US receives it, and forwards it to the International Bureau Receiving Office, since the US office is not a competent office.
5. Inequitable Conduct: Typically examiner does not look into inequitable conduct based on admission by applicant, but in which case may it be taken into account
A) Applicant says “not intentional” even though Examiner knows there is inequitable conduct
B) Applicant says “unintentional” about knowing some art or court case
C) ?
D) Third Party files a protest of fraud saying he invented the invention first
E) a variant of D
6. (I can’t quite remember this one right, but D was the answer to how the question was written) Which one does not work to invoke 112 6th paragraph?
(A) the claim limitations uses the phrase “means for” or “step for;”
(B) the “means for” or “step for” must be modified by functional language; and
(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.
D) the claim limitation recites “step for”
E) None of them invoke 112 6th paragraph
My answer was D) due to that funny E ending, and since
7. All are required for an oral hearing except:
a) Separate paper
b) Filing Fee
c) Written Request
d) Time and Date of Oral Hearing
e) All are required
The correct answer is D, MPEP 1209, the board picks a date and time.
8. What constitutes a 102(b) public sale bar?
A)
B)
C) A commercial sell, but is rejected
D)
E) some crazy answer which is a specific court case in the MPEP where an order was placed and the answer was “bla la”
Correct answer was the sale that was rejected, which has some ambiguity but is says specifically in MPEP that may constitute a bar.
REPEAT QUESTIONS
3 Questions regarding new grounds of rejection on Appeal
Variant of Acme company with the given fact that the assignment has already been recorded, so what now.
Various Items I remember from previous questions that ended up being questions.
• Potter question was asked.
• Rescind and 45 days,
• assignee not of record may assign small entity,
• How long from time can you get a refund for small entity.
• You must reclaim foreign priority in a reissue, even if mentioned in the original
• Cancer question
• Regarding Multiplicity – Call up attorney
• What is required for Piecemeal – 4 items, one including Multiplicity
• Revival of Ex Parte Examination
• Incorrect spelling of inventor Jon convert to John, how do you fix?
GOOD LUCK
‘m taking the patent bar in a few months and I was wondering if I should really spend the money on a prep course, or if there’s a cheaper way to get by. I’ve seen a lot of cheap prep books on Amazon, but I really haven’t heard anything about them. Everyone I know who passed took BarBri or PLI. Any suggestions? Thanks!!!
I know a lot of people buy those materials, but I can tell you that I passed a few months ago, and I only spent $30. And I shouldn’t even have spent that. I mainly studied the study guide from freepatentbar.com, all the previous exams, and this website. I studied 8-10 hours a day for three weeks, and then I passed. If you would like more information on how I studied, just let me know. I’d be happy to help.
Thank you so much for the feedback! I found it very helpful. I definitely have a better idea of what my study plan will be while trying to stick to a budget. I appreciate the offer to provide me with more information, which I may have to take you up on as my approach develops. Thanks!!!
Hi Tech Passer,
I have read your posts and am very interested in learning how you prepared yourself for the exam as I have no prior patent experience.
For example, I looked at the guide by freepatentbar.com and it is stated to read Appendix R – Patent Rules as the first step. I am still a bit confused. Perhaps, the material you purchased for $30 gives a decent introduction? Can you tell me what is the $30 prep material that you bought?
Thanks so much
Zena,
I used the Ultimate Patent Bar Exam Study Guide as introductory material. You can get it for $29.99 on Amazon.com:
http://www.amazon.com/Patent-Bar-Exam-Ultimate-Delivery/dp/B002B36NSC/ref=sr_1_1?ie=UTF8&s=miscellaneous&qid=1265761406&sr=8-1
I read through the guide and took notes from it before I started taking tests and looking at this website. It was a fairly good introduction for somebody who had not so much as seen a patent before starting the studying. However, I also looked through freepatentbar.com’s study guide, and after taking the test, I felt that would have been enough as an introduction rather than the Ultimate Guide, especially since it’s free.
However, if you do purchase this guide, you will get access to the PDF study guide and a website with all the published exams from 1998-2003, which is very helpful. I would not suggest depending on just the guide for studying because I can almost guarantee that you will not pass, but if you use the guide, the tests, and this website, you can pass just like I did.
Also, a small note on Appendix R: It’s just title 37 of the CFR. It’s good to know the information in there, and you will undoubtedly have to study from it when you read the answers to the old tests, but just reading the rules is not very helpful without context, which is what the MPEP provides.
Let me know if I can help in any other way, and good luck!
Anyone have the study guide from freepatentbar.com? It’s not on their website anymore, and I was counting on using it !!!!
You are authorized to share it based on the Creative Commons Share-Alike License (http://creativecommons.org/licenses/by-nc-sa/3.0/us/)!
Someone please help! My email is patents.dude@gmail.com .
Just to throw this out there, I suggest folks who want to pass the test and have an actual working knowledge of patent law do the PRG course. Heck, even if you’ve already passed the test, I’d recommend it. Of course its expensive, but it will make you more knowledgeable and thus more profitable in the future.
That said, I used this site a ton in the weeks leading up to the exam, tons of great Q and A and it helps to see the pattern in the tests the PTO gives. Only thing is, don’t always trust the answers above because they like to change the call of the question and the answer choices a lot. Try to understand the reason why the answer is right, rather than straight memorization.
***I’m not affiliated with PRG whatsoever
Thanks for the tips regarding the Q and As. It helps to know what to focus on with those.
I agree that actual working knowledge of patent law is important and I will have to look into PRG when my budget isn’t so tight.
Thank you! Your advice is much appreciated!!
Took the exam on the 18th and passed. God bless this site is all I can say. I would not have passed without it.
Morning session was VERY easy. Between repeats, verbatim MPEP lookups and questions discussed on this site, there were maybe 5 questions I wasn’t entirely sure about.
Some repeats/repeated concepts
*2 month advisory action rule (know what happens when PTO replies after 3 months AND before 3 months – when are fees calc’d from
*Hairgel/football pads
*Chemical claim where there was an initial rejection based on enablement and written description; I said withdraw both rejections (check MPEP for the wording of how to satisfy your burden of showing enab + WD . . . its the exact same as the problem, so I said the guy met the burden)
*NO TITANIUM BASEBELL Q!! WTF, USPTO, I was looking forward to that one!
*Petition to make special, when you don’t need to pay fee
* 6 month 102(d) deadline on design patents
*Mexican nationals
*When 102&103 rejections inappropriate – when cumulative
*The fan-clock-light question – the dimensions don’t matter, it can anticipate even if the drawing doesn’t have dimensions (or somethinglike that)
*means for opening door
*method for crossing the street
*Investigating deceptive intent
*Piecemeal examination
*Assignee of entire interest can sign SE statement before establishing ownership
*Best mode – no need to indicate which is best, so long as best is disclosed
*Third party submissions and protests – what can and can’t be in there (underlining, explanations, etc.)
*No underlining or bracketing when you have a certificate of correction in a reissue (or reexam, whatever it is)
*Hydrocyclone (pick the one that says “method”)
*The two laminate layers one, be sure to read the question and look for “comprising” vs. “consisting of”
Afternoon session was REALLY hard. A bunch of questions I had never seen discussed ANYWHERE on this site or any other. I freaked out a little, so I’m sorry I don’t even remember the prompts, let alone the answer choices. I guess maybe they were the beta Q’s? There were, however, a TON of verbatim look-ups. Probably like 15 in the afternoon where I had no idea why the answer was right, but it was word-for-word from the MPEP so it had to be right, and the other choices were word-for-word with one key word changed so I knew they were wrong. Knowing where to look is CRUCIAL because the search function stinks on the Prometric computers.
As for how to prep, I did the Longacre course. Really the only helpful part of it was the immense bank of test questions. His video lectures were worthless. Do questions until your eyeballs bleed and that is the only way to learn your way around the MPEP. Obviously, do all of the old tests back to 2001, know why the right answers are right and the wrong ones are wrong. And read through the discussions about the reported questions.
Again, thanks to this site. Honestly, I don’t know how this site hasn’t singlehandedly brought up the pass rate on this test…and/or received a cease and desist letter from the UPSTO hahaha!
I am planning on taking the test in a couple of months. I find this site to be extremely useful. Thank you for all the info, guys!
passed. this site was extremely useful. about 20-25 repeats.
Passed the January exam, PG?
yes, jan 2 computer exam. i pretty much had the 2002/2003 exams memorized, plus a few select q’s from earlier exams. used patbar and also http://www.patentbarstudyguide.com/
search many q’s too in the mpep.
took it yesterday and passed.
Heavy on appeal and PCT
Usual repeats, Tribel, Japanese PCT, moondust, claim counting (8), 102(e) + PCT, overcoming 102(a), (b), (e), doorhandle, Markush, etc.
AM was far more difficult than PM generally, if only because I spent much more time looking things up in the morning.
Thanks to all who contributed to this site.
Stay away from TAPRE patent bar reveiw! Their product takes way over 7 days to arrive and its basically made from a kinko’s copy machine low on ink. There are so many typos and misspellings that I gave up reading after the first day – you just can’t trust the accurracy of what you’re reading when their are that many mistakes. The summary is just a cut-and-paste job from the actual MPEP and their tests don’t even have the questions broken down by chapter or indicate which questions are most often seen on the exam.
I wasted a ton of time waiting for the course to arrive and now i’ve got to wait another week for the PLI homestudy course to arrive.
Bottom line – don’t waste your time TAPRE is a joke and a rip-off.
I’ll let you all know if/when I get my money back from them as they promise.
Appeal questions were to the end of the appeal process.
PCT questions were to the beginning of the process, namely, when the US/RO is not competent to receive.
REMEMBER! and mark my words! always search part of an answer in the appropriate chapter as a searching technique, especially unique phrases in the answers. For example, typing in “personal acquaintence” took me to the sweet spot on one of the questions in the December exam.
TYPE IN PART OF THE ANSWER(S) once you open the right chapter. It’s a great search method. Type in the truncated term! such as “reject” for rejection/rejects/rejecting or “indefinit” for “indefinite/indefiniteness/etc. or “inventor” for inventorship/inventors/etc. Of course, this means you have to know the right chapter; but a very quick review of the table of contents of the chapter will allow you to guess where approximately in the chapter the answer may be; so you can skip to that general section and then start searching for the word. Don’t ever sit there and “read” a portion. If you can’t find it ASAP, you are not using the word search function appropriately. For example, one answer on the exam was on the on sale bar, and said “an offer for sale, that was rejected.” Go to Ch. 2100, see ToC for “on sale” go to 2133 or that general area, search for “reject” and just starting hitting return. You will come across the answer quickly.
Remember, do it fast! Don’t waste time reading. Read the table of contents in about 10 seconds, enter the term or phrase in the approximate spot and start hitting enter really fast (without reading) until something looks really promising.
Here’s another thing about searching:
Use the CFR table of contents! Type in the truncated term at the very beginning of Appendix R, get a CFR number. Read that CFR really fast to see if the answer is in there, or if the CFR is long, type in a search term. If not in the CFR do this:
Go to section R of the MPEP index, at approximately page 95, there you will see a correlation of the CFR with the MPEP under “Rules, patent” You will not need to use any other part of the MPEP index but this section! This will tell you exactly where in the MPEP to find that part of the CFR.
Example: Question on application files that cannot be located. Go to Appendix R, the CFR, type in “locat” as the term. This takes you to CFR 1.25, if you don’t find the answer in the CFR really fast then go to the MPEP index at section “R” approximately page 95, go to CFR 1.251 under that section and it says it is discussed at MPEP 508.04. go there and start searching for terms, if necessary.
This is another really good search method. Note that the MPEP index is generally useless. The CFR Table of Contents (for part 1) is really good; in correlation with the “R” section of the MPEP index, it takes you right where you need to go.
The best practice exam for this searching technique is the 2002 April AM exam. Use the CFR, then “R” of the MPEP, and search for terms or phrases in either.
A very helpful tip. Works always. Thanks a lot, Christina!
Thank you, Christina. I used your search method during the exam. It certainly contributed to my passing the exam. Thanks again.
What’s the difference between “CFR” and R appendix?
Took it today (January 13, 2010) and passed. Repeats (non-2002/2003):
Titanium baseball
Mirror (perpendicular/parallel)
PCT filing dates
Appeal
Both AM and PM sessions were harder than expected. I had about 15 repeats and barely finished on time.
The R Appendix was a huge help.
How I Prepared:
– Read a 50 page outline (from ebay) just once
– Started practicing two weeks ago
– Did the October 2003 test untimed, and looked up every answer after doing the question
– Did the rest timed on freepatentbar.com
– Ended up doing the 2003/2002 tests about 3 times each, and the 2001 tests twice; scored in the 80s and 90s by the last day
– Took a break the day before; 10 hours of sleep the night before; breakfast and lunch on test day
I took Intro to IP Law, Patent Enforcement and Advanced Topics in Patent Law in law school. If you are completely unexposed to patent law or practice, I would recommend reading a basic, introductory outline of a law school patent/IP law course prior to commencing your official preparation. For efficiency’s sake, you should know at least the basic patent or patent application requirements before you even begin to look at a detailed outline of the MPEP.
This website was a tremendous help. I truly appreciate the contribution.
Good luck to future test takers.
The 50 page outline (from ebay) is from the CD: <>—-100% Position Feedback. This CD is the best-selling and the cheapest price for your Patent Bar Exam.
That easy useful 50 pages outline (from ebay) is from this CD: US Patent Bar Exam Study Bible CD—-100% Position Feedback. This CD is the best-selling and the cheapest price for your Patent Bar Exam.
Does anyone have a list of patent bar review programs and (maybe) can rate which is best? Thanks
No.1 and the best-selling & cheapest patent bar review program in USA is <> from ebay, only cost: $ 19.91.
You can Read its best-rate 53 pages outline just once, you get a big picture for US Patent Bar Exam in just 1 hour.
I am new here. It seems that taking 2000-2003 old exam is a must. Is there any link I could download this free? or any other most recent ones I could have as well?
Just go to freepatentbar.com and check out their exam simulator, it’s free, that’s what i used, also download a pdf of the mpep (i think they have that as well). I passed about a month ago, using those sources…
Does anyone know whether, in the MPEP on the exam, the search function begins searching for a word wherever you are in the document? I thought I read somewhere that it always began searching from the beginning, but then I saw something above that contradicted that. Maybe the technology they use has changed. Can someone clear this up for me? Thanks!
Hi Emily, Rolf here, Agent 63, 542.
I took the exam in Sept 2008. At that time , the Acrobat PDF Reader was a completely different GUI than what I was used to with the latest Acrobat Reader version at that time (that fact might still be the case). Go to the tutorial of the Acrobat section which Prometric provides.
However, if you are VERY familiar with Acrobat, you will adopt easily to the different look of the User Interface. The commands are all there on the computer at Prometric, but organized differently with the Acrobat version being used, I guess especially with Prometric, for security reasons. I do recommend to familiarize yourself with your individual version on your own computer and practice to search the latest versions of the MPEP files and sections, 600, 700, 2100, 1800, etc..
I personally preferred to use just one word in my search, rather than phrases, and I believe that I successfully managed the look-up’s, and I had quite a few during the test.
I hope this helps. Good luck when taking the test.
RS
Rolf,
Thank you for the advice. Were you referring to the tutorial that you go through right before taking the exam? I just went through that on Prometric’s website, and it showed some screen shots of the pdf viewer and the “find” command, but didn’t let you try it. I’m still not certain about whether the “find” command starts searching from the beginning of the chapter, or where you are currently in the chapter. Do you remember what it was like when you took it? Thanks!
Does anybody know what PDF version the current MPEP is in the exam?
Thank you!
Hi Emily, Thanks for you note.
What I referred to is that same tutorial, which you have looked up. Yes, it does not let you click on the tabs, ii’t not active.
The overall functionality, however, is the same, except all the tabs are a bit different, at different locations. But, if you train lookups and searches with your own version in detail, you can adopt easily to Prometric’s version on the day of your exam.
I hope this helps. Good luck !
Regards,
Rolf
Effective on or about Thursday, October 19, 2006, the computer-delivered registration examination will make the 8th Edition, Revision 4 of the Manual of Patent Examination Procedure (MPEP) available on the computer monitor. As of that date, all questions on the examination will be based on the contents of the 8th Edition, Revision 4 of the MPEP .
http://www.uspto.gov/ip/boards/oed/exam/registration.jsp
took the exam today. passed. heavy on appeal and pct. had the titanium baseball and museum question as well as the mirror question as a prev poster noted. harder than expected and didn’t have a lot of time and never had a problem doing practice exams. its a track meet so don’t dwell too much on any one particular question. lots of repeats from the old exams that are on this site. this site was very instrumental in my studies, thanks!!
I also had the museum question. Passed using the info on this site and http://www.patentbarstudyguide.com/
I do recommend to familiarize yourself with your individual version on your own computer and practice to search the latest versions of the MPEP files and sections, 600, 700, 2100, 1800, etc..
The easy useful 50 pages outline (from ebay) is from this CD:
http://cgi.ebay.com/ws/eBayISAPI.dll?ViewItem&item=180346442242&ssPageName=STRK:MESELX:IT
Took it today and passed. Repeats incldued
Titanium baseball
Mirror (perpendicular/parallel)
PCT filing dates
Appeal
Both AM and PM sessions were as expected. I had about 20 repeats and barely finished on time.
How I Prepared:
– Did the October 2003 test untimed, and looked up every answer after doing the question
– Ended up doing the 2003/2002 tests about 3 times each, and the 2001 tests twice; scored in the 80s and 90s by the last day
– Read the Ultimate Patent Bar Exam Study Guide from http://www.patentbarstudyguide.com. This guide contains s list of recently tested topics, as well as a list of repeated questions which is more inclusive than the one on this site.
Good Luck!
This woman is the girl-friend of the product owner and is affiliated with the Ultimate Patent Bar Exam Study Guide.
I failed the Patent Bar Exam with the Ultimate Patent Bar Exam Study Guide.
I spent $ 29.99 to buy the Ultimate Patent Bar Exam Study Guide before 3 moths ago , I tell you, no useful at all. Stay away from the Ultimate Patent Bar Exam Study Guide! This product has so many typos and misspellings that I gave up reading after the first day – you just can’t trust the accurracy of what you’re reading when their are that many mistakes. The summary is just a cut-and-paste job from the actual MPEP and their tests don’t even have the questions broken down by chapter or indicate which questions are most often seen on the exam.
I wasted a ton of time in this product course and failed the Exam. Bottom line – don’t waste your time the Ultimate Patent Bar Exam Study Guide is a joke..
any PRG users to pass or not pass the exam? I have a copy of 2009 and working on that. Please share and advise how I could proceed.
In 4/03/AM/#8 The USPTO’s correct answer states that (E) is the correct answer since all claims have been twice rejected. However, claims 11-20 seem to have been rejected only once. Can someone confirm/explain?
I took the exam on February 5th and passed. There were a number repeats, although not as many as I expected (and hoped for):
Mario Lepieux
Smith Laminate
Prior Art
Johnnie and Floor Tile
Hair Gel (Einstein version)
Smith and Jones
Bloc
Tribell
Piecemeal
I prepared with the following method:
– All the material here (very useful, thank you!)
– Very old PLI outline
– Bullseye materials (I thought they were very helpful)
– Patentbarquestions.com
– Took timed 2002 & 2003 exams at freepatentbar.com
I studied for a total of about 100 hours, but I took a number of IP courses in law school.
The AM section was easier than the PM section, but I still had time to look up all the harder questions.
is it possible not look up MPEP (pdf file searching) at all in test? anyone passed this without searching durring the test? how could I make it or prepare for that?
As I am still in preparing, so I plan to do my best in studying and taking exam as many as I could memorize and make a quick/smart choose.. any suggestion or experience sharing will be great.
DO NOT try to take this test without using the MPEP. I would say there is absolutely no chance you can pass that way unless you memorize the 3000+ pages of the MPEP, along with all the appropriate CFR and USC sections. There is too much memorization. Your best bet is to take the available exams as many times as possible and familiarize yourself with the MPEP. You want to be able to find something as soon as you search for it, but you really do not want to try to memorize it. That would not be a good study method.
For those who have been admitted, how long does it take for the PTO to confirm admission after you mail in the registration fee, oath and data sheet? I sent mine in 3 weeks ago and have not received any confirmation. Is this information available on the PTO’s website?
Sorry…I didn’t intend for my comment to respond to the one above…
For those who have been admitted, how long does it take for the PTO to confirm admission after you mail in the registration fee, oath and data sheet? I sent mine in 3 weeks ago and have not received any confirmation. Is this information available on the PTO’s website?
It takes a while – I passed the exam Oct 26, and filled out every form I received from them the day I got it (and sent back). I showed up on the list of patent agents on Dec 22nd. After they receive your materials, they have to publish your name in the gazette to see if anyone has any moral grounds against you – that takes a while. (you can check to see when your name shows up – there is some delay on that front as well – http://www.uspto.gov/news/og/index.jsp )
You can also check for your name here:
https://oedci.uspto.gov/OEDCI/
I passed in August, returned my papers in early September, was registered in late September, and got my certificate in late October.
Quick question regarding the PDF version of the MPEP that is provided during the exam.
Are the chapter titles available during the exam as well as the chapter number or is just the chapter number provided? For example:
1) 100 Secrecy, Access, National Security, and Foreign Filing
or
2) 100
Hi ALL, or et al, who are studying for the Prometric Exam:
The MPEP folder on the Prometric Test is exactly the same as if you download it from the USPTO’s web site or any Training Web Site.
The only difference: The User Interface, the tabs, are positioned differently, it operates a bit differently than your regular ADOBE Reader user interface, but you will see the difference when you log on to the Prometric Tutorial.
When you click the “MPEP” button from the test question page, it takes you to the MPEP, and there is a drop-down menu that lists the chapter numbers and titles. Then you click “open”, and the chapter comes up with the subtitles along the left-hand side. There is a button you use to find, which has options of case-sensitive and whole word only searches, and you can search up and down. The search starts from wherever you are in the chapter, and you can use “find next.” When you go back to the question page and then re-open the MPEP, it stays wherever you were before. (Just a tip – ctrl + f didn’t work to open the “find” function and I wasted valuable seconds because I was so used to doing that. Not a big deal though.)
I passed today, and this site was a great help. I used PLI and went through all the lectures, but the most helpful thing was going through all the old exams, and learning how to quickly search the MPEP. I had a good number of repeats – probably 15-20.
The repeats I can remember are:
Mario Lepieux
Laminate
Tribell
64.9% obviousness
Japan 45 days
There were more but I’m blanking. It was very reassuring that every few questions I would hit one I recognized. The rest were actually fairly straightforward. A decent number on PCT, especially 102(e) dates. One question involving PCT and what corrections would be accepted by USPTO acting as the international search authority – I couldn’t find the answer anywhere in MPEP. Also a lot on appeals, especially dealing with new grounds of rejection by the Board. A decent number on correcting inventorship. One I was confused by was a question asking from what sources essential material can be incorporated by reference. The answers were foreigh patent, foreign publication, non-patent publication, U.S. patent that also incorporates by reference, and unpublished pending U.S. app. All of those were wrong according to MPEP, but I chose the pending app because that was accepted prior to 2004 or some date. Also, if you haven’t already, check out the list of newly reported questions on http://www.patentbarquestions.com. I saw several of those.
Thanks, Tech Passer and all.. I will work on that MPEP way… it seems that all 2002 and 2003 exams (all these 2 years?) are very important, anything else?
I passed 2 days ago and it’s time to sell my PLI course!
I’m selling my used PLI course + bullseye + recent question software + etc(some material that i made during the study).
Is there anyone interested? Please send me an email.
catinea@me.com
Free-of-charge audio lectures for those who are studying for the USPTO patent bar exam
The audio lectures are at https://www.oppedahl.com/patentbar/ .
Hi Chenyan,
I’d be very glad to use the lectures.
i passed yday on my first try. Very few repeat Qs, for sure not more than 6-8 in all. the repeats I can remember were:
-mario lepieux
-tribell
-japan 45 days
-laminate
-australia PCT (fwd to IB)
I had lots of Qs from assignment (mpep 300) and a couple from protest (1900). ALso some new variants of older Qs. some Qs i got are below.
-variant of new matter. amendment makes changes to spec and claim 2 but not claim 1. however, amendment to spec affects scope of claim 1. what shud examiner do.
(i searched in mpep 700 and found the answer. it was to reject spec on 132, and both claims 1-2 on 112, 1st para.)
-reissue oath fraud related Q (answer was from 1400 that if exaimer has outside/personal knowledge of a court action related to fraud for a patent, he can reject the reissue oath of that patent claiming “no error or deceptive intent”
-what can assignee who has not established ownership sign? (answer in 300, can sign small entity status)
– i had 3-4 pct Qs (one was for a 102e date, one regarding amendments to the drawing, one regarding filing an IA at the USPTO in on-english)
I will post other Qs as i remember them!
The application for the examination was inadvertently mailed without the return postcard. What are the repercussions?
Learn’t my first lesson before the exam:-)!
I don’t think it’s a big deal. The return postcard is only for your benefit if you want to see when they received your application. You may be able to call the office (after giving it enough time to get there) to check if they received it, but I’m not sure if they answer those sorts of questions over the phone. I sent a return postcard with mine, but never got it back, and they processed my application fine. (I think my postcard was too small to actually qualify as a postcard so that’s probably why.)
Phew!!!
Thank you so much.
I am looking for basic understanding about the Patent Bar. I am a licensed attorney. My undergrad coursework consisted of all pre-med requirements (1 yr of general chem, 1 yr organic chem, 1 yr phycis, 1 yr biology). I am thinking about writing the patent bar exam simply becasue I am bored of what I do and I am looking for soemthing new. Here are my questions:
1. Does anyone know from experience and knowledge whether my undergrad coursework makes me eligible to sit for the exam?
2. Could you please recommend some prep materials, courses, cost of those etc?
3. How much time does one need to prepare for the exam?
4. Is it worth it?
I would really appreciate any help I can get.
Thanks.
Swerve
Hi Swerve, go to:
http://www.uspto.gov/web/offices/pac/mpep/documents/front.htm
and look up page 6 and the following pages.
Regards,
Rolf # 63,542
I don’t know much about searching for answers during the exam.
1) Is the MPEP what is searched, or is the USC or CFR also provided? In other words, what should I be more familiar with?
2) Also, is it necessary to memorize the titles of each chapter of the MPEP, or is it provided in the electronic version provided?
3) Is there an online version of the MPEP/CFR/USC (whatever is provided on the exam) that most closely mimics the version used on the exam? I looked on the USPTO’s website and there is a version, but it is split up and I’m assuming the version provided at the exam is not split up.
4) Finally, I’ve heard different things–some people say that they don’t have time to search for anything, while the freepatentbar.com outline says that the majority of questions are ones you need to look up. Can anyone tell me which is more accurate?
Any help would be greatly appreciated!!
Sophie, see my post on 3/2/10 on the “prometric patent bar” page on this site – it answers your first, second, and third questions. As far as how much you can search, it all depends on your preparation. If you are very familiar with the old exam questions, and the new questions reported on this site, you can breeze through those and you will likely have plenty of time to look up the harder questions. Of course some people don’t get as many repeats, and they might be more crunched for time. I had enough time left to search for everything I wasn’t sure of, and I finished the second half of the exam half an hour early because I’d already looked up everything and even double checked things I thought I knew but wasn’t positive about.
Thanks Emily!! I’ll try to get as familiar with the old questions as possible.
hi, sophie, you can find a patent bar exam interactive training kit-patent bar simulator List of over 211real questions and answers currently appearing on the computer version of the Patent Bar Exam at ebay.
I think I’m ready to take this thing next week (haven’t officially scheduled yet) but I recently came upon a link to Bullseye and their products page. From what I’ve gathered on this site, it seems “generally” good things I hear about it, and its a great supplement to PLI. One thing caught my eye on their products page and I’m reallllllly interested in knowing more about this lol:
**********
Current Questions – Price $9.99
List of 60 questions and answers currently appearing on the computer version of the Patent Bar Exam
This item includes the questions currently being repeated as test questions on the computer version of the Patent Bar Exam. This item includes 60 current test questions and answers. By memorizing these questions, you will likely recognize between 15-25 questions on your exam on test day.
************
Has anybody bought or used this? Is it similar to the questions found here under “Exam Questions and Concepts” and/or Patentbarquestions.com? I’m not sure if $9.99 is worth it, or if this is a good deal or not before I purchase?
P.S. They also claim that their “course includes recent questions tested between 2007-2010” —> huh? lol, is this true?
Not worth it at all. They sent me repeated questions from ’02 and ’03, which you would know from this site for free and you would practice these two years anyway. There was nothing from 2007-2010 in what they sent me. I complained to Bulleseye, they didn’t respond. It was in Dec 2009.
Follow-up on 359 & 360…
I am preparing the exam in the early stage… my plan to is quick-read through the material I bought from patent resource group and do the test… but I do not know if I need to or how to read some key MPEP materials for the exam. Please advise based on your experience.
It seems that it is very important to use online MPEP in testing.. how could I prepare for that when I am in this initial stage? do I need to study or how to study the MPEP? Please advise.
Or how could I exercise to make it more familiar? Please advise
Hope this helps you Lora (and to others), as I just passed it the other day! Skip to 5 if you wana jump to my exam experience.
* – everybodys experience may vary, but these are the steps I took, and I am fairly confident that it helped me pass
1) Did the PLI material, listened to the DVDs, and made my own notes (outline) for each chapter, and combined this into one huge Outline (all this took about a month or so). yes, each day seems boring or tough, but just stick to it (force yourself someway!)
2) For the next month, I did ALL the available exams posted on this cite from 2003 – 2000. First, I took all of them individually untimed, and then looked up the answer in the MPEP (they usually give a MPEP citation in the Answers). This helped me recognize key words/phrases that I could search. Your MPEP search experience builds upon each search you do, and this is how you slowly become familiar with commonly tested chapters such as 600, 700, 1200, 1400, 2100 etc. After all this, I memorized the answer to EVERY single question from 2003-2000. Now, some of you may be like “umm how or why?” – lol, trust me, once you see so many of these questions, your brain can immediately recognize the answer, and it’s stuck. It seems overwhelming (I know, cuz I thought there’s no way I could do this), but then you eventually begin to memorize the answer.
3) I also used this site heavily as well as patentbarquestions (Questions reportedly and Load Dump links). Regarding these sites, this is my advice: First, look up Exams Questions and Concepts on this site. After skimming, MAKE YOUR OWN NOTES OF THESE QUESTIONS (e.g. write down the question, then Look it up in the MPEP, THEN COMPARE with the answers given on this site). I can NOT STRESS ENOUGH this importance. Not only are you trying to understand the commonly asked questions, but you are also forcing yourself to look it up in the MPEP. Yes, there are 68 of these, and yes it will take time, but trust me: If you put in this effort, you will be rewarded on the actual exam.
4) This may sound weird, but I “studied” other people’s posts on here, as I found it extremely helpful. Make notes on these, or just memorize/understand them, b/c you will find some of them on the actual exam! Here are particulars I found. At the very least, please skim them! These are like 4-5 points extra you will immediately recognize!
55. luis
75. pdl
106. seas
123. mohammad
165. cw
200. sarahL
272. s
295. ash
5) Ok, I know you skipped down here to see how many and what repeats I got. AM was good, PM even better. I got 0 repeats. lol jk, i actually saw about 25-30 repeats (verbatim!) from the Old Exams. Then, from the Repeated questions on this site, at least 15.
Time for some quick math. I need 35 on each section at least to get the required 70. Let’s say I had 25 repeats, that leaves me 12 repeats/section. And 15 on top of that gives me 40 repeats for the entire exam. I need 30 more to get 70, thats it!
Here is what I saw
– Tribell, Japan 45 days, 3rd party submissions, Titanium Baseball, 52 Tables, Mexican National, Lip Gloss, Small Entity, CPA via Fax, Broom, Piecemeal, Best Mode
– Many from April/October 2000, April 2002, April 2003, October 2003 (know these exams by heart, and I’ll say you got at least 20 points right here);
– only a few (3 or 4) PCT, those were all in the PM section. Appeals (1200) had at least 5 questions as did Death of Inventor situations. Rest were 2100 or 700 or 600 or 200 or 300 lookups.
– I personally think, no need to look at exams beyond 2000. It’s not worth it. I dont think i saw anything from beyond 2000.
Here is what I didn’t see
– Red Ink, 147 claims, Mirror, Spanish Phone, Velcro, Costa Rica/Sweden, Door Knob, Fan/Lamp, PTO 892, Hair Gel ,Divisional Reissue
This site helped me a lot, so it’s only fair I help others out and give back. Good luck!
Wow! There’s great patent bar information here. This is a great site!
Wow… thanks ~Pbar hopeful 2010 !
This is very helpful to me, too. That will encourage me to study and do it …
Anywhere I could get as many old exams to exercise like you for free?
I think you can get all the papers for free from freepatentbar.com
No prob! For Old Exams, simply scroll to the top of this page and click on “Old Exams”. They are all in PDF and have answers and explanations to them. For current questions, click on “Exam Questions and Concepts”, each question will have a separate link where there are numerous discussions and explanations about potential answers.
Hello,
I am not so familiar with patent bar. All I know is that I am taking the test, and I don’t know where to find the material to study from. I looked in the actual (official) website, but couldn’t figure out what to download to study. I appreciate any insight.
I am hoping to sit for the patent bar soon. People who have posted the new questions, could you also post the answers? Just by saying Mirror, Japanese, Perfume, baseball do not really help, since we don’t know the questions or the answers. I know I am asking a lot, but where do I get the answers to the new questions?
Thanks a lot.
Go to “Exam Questions and Concepts” to find the current tested questions. They are all listed, I think aobut 68 of them. Each question has its own explanation + potential answers.
Do I have to buy the PLI review books, or is there any other way to study for this test?
PLI is the way to go. I used them and passed easily. You’ll probably pass eventually but it’s not worth the trouble.
Thanx Jamie. Did u take their classes or just used their books and stuff?
are you selling your PLI course materials?
Thanks!
Just took the exam today (1st time) and I passed.
I didn’t spend a single penny on studying. I mainly used this site and minimally used patentbarquestion and freepatentbar to study. Honestly, I feel like I probably got over 90% and way over studied for the exam.
Anyways, I do not remember all the repeats but there were a ton (probably close to 50%). Some PCT (maybe like 6) and a good amount on appeals as well as anticipation/obviousness and citation of prior art. However, I have so many exam questions in my head from my studies that I cannot recall which ones are from today and which ones are from practice exams I took.
I know others have mentioned this but I can not stress enough the importance of knowing the 2003-2000 exams. I don’t mean memorizing the answers, I mean KNOW those exams, where to find the information on the MPEP, why the correct answers are correct and the wrong ones are wrong. Also, since those exams are based on a different version of the MPEP, there are some instances where the right answers are now wrong and in some cases, the wrong answers are now right so make sure you KNOW those exams based on the MPEP 8 edition Rev 4 (might be different if you see this post far in the future) not just based on the explanation of answers from those exams.
I took the 2003 exams twice and the others only once (starting with the 2003 exams, working my way down to the 2000, and then retaking the 2003 exams). However, other than the 2003 exams, I scored over 90% on all the exams my first time through. Two nights before the exam, I just took a look at only the repeats from the 2000-2003 exams that are listed on this site.
Anyways, the exam really isn’t that tough. Just put in the time and relax on exam day.
I am not into study guides either, but for this exam since I have no clue how to study (what to study), I probably need something for it. does anyone know where I can buy PLI review books cds/dvds for cheap? Not many on e-bay.
I passed the exam on Saturday 3/13. This site and the wiki site are great resources. I don’t know if I would have passed without all of the information on the new questions posted on this site. Thank you.
I sat for the exam in Hamden, CT. The test center was good with fast computers and large screens. The only complaint I have is that there were many other test takers coming and going throughout the six hours I was taking the exam. It was somewhat distracting. Good thing I used the headphones.
My study program was as follows:
1. PES study guide (four volumes). This was good for the fundamentals.
2. Old exams, especially 2002 and 2003. You have to do the old exams as many times as possible and study the answers. This way you will know how the exam questions are worded (i.e. double negatives). These old tests also cover material that is on the test today.
3. This site and the wiki site. These sites are invaluable for the topics covered by the new questions.
I have no idea how many hours I studied.
On the actual test, I saw many repeats from the 2002 and 2003 exams. Probably 10 – 15 in the morning and about the same in the afternoon. There is nothing like seeing a word for word repeat pop up on the exam. You can answer it in 30 seconds and move on. Use the time you saved to look up other answers in the MPEP.
Looking at “pbar hopeful 2010” 3/11 post, it appears that my test was very similar. So, I won’t repeat what is written there. However, I did see Velcro, 147 claims, costa rica/sweden, door knob and hairgel. I also had a bunch of obviousness and enablement questions.
Good luck!
Hi Dave S,
In your comments, you mentioned about you were using “This site and the wiki site”. Can you please give the actual URL of the “wiki” site ?
Thanks,
JKL.
http://patentbarquestions.com/Main_Page
Hi,
I have been reading posts on this site and I wonder how long does it usually take to study for the bar.
I have taken a leave from school (engineering) and have absolutely no prior legal/patent experience.
I saw some really good insights on what to read and how to prepare for the exam, but I am just wondering how long it took you guys to prepare for the exam just so I know what I am getting myself into and to set realistic deadlines for myself to hopefully motivate me get through this.
Could you tell me how many hours a day and for how many days you studied for the exam?
Thank you so much.
yes, mdavis68 got it right.
I will be taking the exam in the next several months, and I see that many people say that knowing how to search the MPEP is one of the most important things for passing the exam. Can someone elaborate on that? I’m trying to get an idea of whether I should start by sort of memorizing the different sections of the MPEP, reading as much of it as possible, or just taking exams and searching, which would hopefully help me to become more familiar in that way…
Read just important highlighted sections in this study guide or commercial study product. The hard part is narrowing down what to study, not sure expensive home-study products are worth the money so you could try first. These current and past test questions are the more important which you need to save a lot of time for after the general studying/reading.
I meant if you do the above, reading just highlights and then exams, you should become familiar with what you need so kinda BOTH. Don’t spend too much time reading/memorizing though, and run out of time for lots of exam questions.
Hi Calvin,
When you say “highlighted sections” can you tell us a little more about what you mean. For example, the freepatentbar study outline says to read the AppendixR 3 times and then goes on to list other chapters of MPEP to be read …
I still have not finished reading Appendix R, but I am not quite sure if it is the best way to start preparing for the exam? At least, wouldn’t it be better to go through the outline notes first?
I am confused on how to start studying, especially that I am broke and cannot afford to spend money on study guides. I don’t mind hard work, I am just not too confident if I should follow what the freepatentbar outline suggest, or at least in the order that is suggested which is:
37 CFR S1
37 CFR S10
37 CFR S41
MPEP 700
…
And then last step is recommended to read the outline.
I am clueless, and cannot decide whether the outline actually is recommending that we follow the steps given, or it doesn’t matter … cause I don’t want to waste so much time reading hundreds and hundreds of pages and then finding out I did not need the information
So can you please tell us what you mean by “highlights” ?
Thank you so much!
These Links on the “study guide” page are NOT working:
3) 35 USC 102 (a),(b),(c),(d),(e),(f) and (g)
Sean – Thanks for letting me know. I’m fixing them right now.
All set!
I passed last week, thanks for the great site.
I am selling my almost entirely unused PRG study materials. This includes: 1) All 4 volumes of volumes of “Patent Practice” textbook,
2) Printed practice questions corresponding to each volume of “Patent Practice,”
3) CD-ROM with over 2,000 practice questions (really helpful),
4) Printed version of MPEP (4 large binders),
5) PRG’s “Latest Tips and Tricks for Success” for passing the patent bar on your first try, and
6) Binder with all handouts from class and my notes.
Price is 750 (paid almost 3,000).
Please respond to this thread if interested.
I am very interested in your items. Are you an JD? from your ” PatJD? Which is law school graduate from ? Do you work? or just graduate this year? How long do you prepare for Patent bar exam? Thanks!
I am studying for the exam, and was wondering if anyone is interested in studying/discussing the exam over the phone or via personal emails? We can then publish what we found out about various things for others to also know. If this is ok to post it in this site, please send me your e-mail address, if you are interested in live discussions/studying. Thanks.
I would like to study together…. my email is resrivi@yahoo.com
Thanks
is it ok to buy PLI from 2006?
DaVinciCode and S: I’d like to study together. my email: patentbarstudy@gmail.com. thanks!
For those Patent Bar Students who might be ready around June/July this year to take the exam: FOUND IN: http://www.ipwatchdog.com
In 2004 the United States Patent and Trademark Office modified the way it administered the Patent Bar Examination, moving from a test given either once or twice a year in paper form at a variety of locations across the United States, to a computerized examination administered on demand.
This year individuals seeking registration before the United States Patent and Trademark Office (Office) as patent attorneys and agents can take the exam at the USPTO on July 13 or July 14, 2010. The deadline for applying to take the exam in person at the USPTO is Friday, May 14, 2010.
Regards,
Rolf
Passed last Thursday on my first try in San Francisco. Studied for about 2 1/2 weeks, as you can see from my previous post (didn’t have a clue then how to study for this thing). Thanks to the creator of this site and everyone who has contributed!!
Here’s how I studied:
Didn’t spend a dime. Old Exams: Did old exams 2000-2003 untimed. Looked up all answers for 2002 and 2003 to get familiar with the MPEP. Didn’t look up answers for 2000 or 2001 unless I needed clarification on the answers. Did 2002 and 2003 questions a second time, highlighting the ones I thought were tricky. Went through the highlighted ones again the day before the exam.
This website: Read through all the categories on the study guide page. Read through the exam questions and concepts the day before the exam. Never took a timed exam. Didn’t use any other sites, but I did look at the first few pages of the outline on freepatentbar.com to learn how to make a cheat sheet.
How the exam went: Made my cheat sheet during the time left from the tutorial. This helped a lot because it took me about 5 minutes to do this. ~10 repeats in the morning and ~15 in the afternoon, not including the ones that showed up in the exam questions and concepts page. Those mostly showed up in the afternoon. Here are the ones I got:
Red or black ink
Mirror
Missing parts-PCT
Spanish phone
Lip gloss
Indefinite claim using “high”
Piecemeal
Multiplicity
Japanese patent
Advisory action
Restriction
I don’t remember too many questions, but I do remember that some of the repeats were modified so that the last choice was none of the above, even though I know that wasn’t a choice in the originals. Here’s one I do remember that took me a while to look up:
When can an assignee sign something without establishing ownership?
Choices were:
small entity statement
request for status of an app
correction of inventorship
appointing an attorney/agent
can’t remember last choice
answer: small entity status (MPEP 324, VII)
The other questions were pretty easy to look up. There were a few where the choices were modified from MPEP language, so I had to search for key words and look at each one.
I downloaded Adobe 5 and used that version while studying, but it was still different from the version I got on the exam. Specifically, the version on the exam had each chapter listed and you had to click on the chapter you wanted from the drop down menu and click “open.” I wasn’t used to having to do this and if you don’t click “open,” you remain on the chapter you last looked at, so make sure you click “open” before trying to use the find function. Also, the version on the exam had every MPEP section and subsection listed instead of my version, which had only the main sections listed and you could then click on those to get more detailed sections within those. On the exam, I had a hard time with this because it would have taken me a long time to find the exact section I was looking for, so I used the find function a lot. It was easier to use find while on the first page of the chapter so that if the topic I was looking for was there, I could find the exact location quickly. Also, since you could only look at one chapter at a time, you could only use the find function one chapter at a time. On the version I had, I could search the entire MPEP for a word or phrase.
I had about 30 minutes left over in the morning and about 40 in the afternoon. I had time to look up everything and double check.
My advice: Don’t get too worried about memorizing all the answers to the old exams–as I said previously, I looked at the answers for the 2002-2003 questions 3 times at most. I really didn’t have time to do much more since I only studied for 2 1/2 weeks. Make sure you make a cheat sheet (I’m not sure if you are allowed to do so during the tutorial time like I did, but a proctor walked by me while I was doing this, so I think it’s ok). You really don’t need to put in that much time if you approach this exam strategically–I only looked up as many answers in the old exams as I needed to in order to feel comfortable searching for things in the MPEP. The 2002 and 2003 exams are the most important, so make sure you focus on those. Make sure you look at the exam concepts page. I got a lot of those questions and since I studied them before the exam, I was prepared and just put the answers that there was a general consensus about.
If you’ve taken the MPRE, I’d say you need to study a comparable about, but in addition, you need to be familiar with the MPEP. If you’ve passed the CA bar, this test isn’t anything to stress over.
Sorry if it repeated anything–I didn’t read the older posts. Hope this helps! Good luck!!
Hi Sophie,
Thanks for your post! Could provide me with a link or tell me where you found the outline on freepantentbar.com? I have been searching the site and only found links to their exam simulator and old exams, but no cheat sheet or outline. Thanks for your help.
Like Sophie said, it was taken down a little while ago. It was really good. I would probably ask them to put it up again.
There’s an “answer sheet template” on the usptoExam.com site. It’s similar to the “cheat sheet” on the freepatbar site. Its under the Resources tab at usptoexam.com
Anyone have the study guide from freepatentbar.com? It’s not on their website anymore as mentioned, and I was planning on using it!
You are authorized to share it based on the Creative Commons Share-Alike License (http://creativecommons.org/licenses/by-nc-sa/3.0/us/).
Someone please help! My email is patents.dude@gmail.com .
I’ll throw it on DocStoc if someone sends it along.
could someone please tell me whether this is a good deal or not? PLI patent bar review material except the cd with other exams for $400. I just want to make sure I am spending this money right….thanks
In my opinion, if you’re going to use PLI, you really should get either the CDs or the DVDs because they contain all the lectures.
To those studying for the Patent Bar,
I recently studied for the Patent Bar using these PRG course materials, and I passed the exam on my first try (woohoo!). PRG provides a comprehensive study guide and extremely valuable practice questions that are very similar (sometimes identical) to the questions you will see on the actual exam.
I am selling all my PRG study materials. This includes 7 hard-cover binders, 4 soft-cover textbooks, a pamphlet, and a CD-ROM. More specifically, this includes:
1) All 4 volumes of the “Patent Practice” textbook
2) Printed practice questions corresponding to each volume of “Patent Practice”
3) CD-ROM with over 2,000 practice questions (really helpful)
4) Printed version of MPEP
5) PRG’s “Latest Tips and Tricks for Success” for passing the patent bar on your first try
6) Binder with all handouts from class and my notes
The only writing in any of the materials is in the first several pages of volumes 1 and 3 of the printed practice questions. There is no other writing in any of the textbooks (except for class handouts with my notes).
For more information, go to http://cgi.ebay.com/PRG-Patent-Bar-Review-Course_W0QQitemZ280487663914QQcmdZViewItemQQptZUS_Texbook_Education?hash=item414e5e192a
Good luck studying!
PatJD,
Congratulations on passing the exam!!!
What were some of the new questions you came across?
I have been wondering is someone can answer this:
How long does it take to receive a registration number from the day you pass the test?
I got the PLI study material, but I don’t have a schedule to tell me which one to study 1st and stuff. I was wondering if anyone here who has/had PLI could give me their reading schedule. It will be a big help since I have no clue where to start. Thanks
I’ve passed the patent bar and had my name published in the Official Gazette for approval for registration to practice and I didn’t expect to see my home address published. I supplied a PO Box as the correspondence address because I would prefer to not have my personal information out there, but now it is there for the world to see. It seems like maybe the PTO uses your home address unless you work somewhere and provide your business address, but I’m not sure. I was wondering if anyone else has had this experience and if there is any way to take the information off or to have it changed. I plan to call the PTO, but I’ve had little luck in getting a timely response from them. Any help would be greatly appreciated! Thanks!
Hi,
I am scheduled to take the exam soon – and just wanted to say that this is an amazing site! Will definitely post again with questions after the exam. A quick question – how does one access the cheat sheet on mypatentbar.com site?
Thanks!
Question from April, 2001 pm
1. Which of the following is in accord with proper USPTO practice and procedure?
(A) Upon request to convert a provisional application to a nonprovisional utility application, the nonprovisional application is accorded a filing date as of the date on which the request to convert was filed, but the original filing date of the provisional application is preserved.
(B) If a provisional application does not have a claim as filed, and a claim is not filed with a timely request to convert the provisional application to a nonprovisional utility application, the Office will notify the applicant and set a time period for submitting a claim for examination.
(C) A provisional application filed in November 2000 is entitled to the right of
priority under 35 U.S.C. § 119 of a copending utility application for patent filed in Great Britain in January 2000.
(D) A request filed in January 2001, to convert a provisional application filed in the USPTO in April 2000, to a nonprovisional utility application is timely if filed after the abandonment of the provisional application, i.e., after the pendency of the provisional application, but within twelve months of the filing date of the provisional application provided no petition to revive has been filed and granted.
(E) A nonprovisional utility application filed under the provisions of 37 CFR §
1.53(b) in January 2001, and claiming the benefit of the earlier filing date of a
provisional application must be filed during the pendency of the provisional
application.
Answer:
1. ANSWER: (B) is the most correct answer. 37 C.F.R. § 1.53(c)(3) requires the presence of a
claim to convert a provisional application to a nonprovisional application. The Office will set a
time period within which a claim must be submitted for the Office to grant the request if the
provisional application does not have a claim and a claim is not filed with the request. See,
“Request for Continued Examination Practice and Changes to Provisional Application Practice;
Final Rule,” 65 F.R. 50092, 50099, middle column, (Aug. 16, 2000), 1238 O.G. 13 (Sept. 5,
2000). (A) is not the most correct answer. 37 C.F.R. § 1.53(c)(3). There is only one
application, and that application has a single filing date, the filing date of the provisional
application. See, “Request for Continued Examination Practice and Changes to Provisional
Application Practice; Final Rule,” 65 F.R. 50092, 50099, left column (Aug. 16, 2000), 1238 O.G.
13 (Sept. 5, 2000). (C) is not the most correct answer. 35 U.S.C. § 111(b)(7); 37 C.F.R. §
1.53(c)(4). (D) is not the most correct answer. 37 C.F.R. § 1.53(c)(3) requires that any request
to convert a provisional application to a nonprovisional application be filed prior to abandonment
of the provisional application. See, “Request for Continued Examination Practice and Changes
to Provisional Application Practice; Final Rule,” 65 F.R. 50092, 50098, left and middle columns
(Aug. 16, 2000), 1238 O.G. 13 (Sept. 5, 2000). (E) is not the most correct answer. The
provisions of 35 U.S.C. § 119(e)(2) were amended to eliminate the requirement that a
nonprovisional application claiming the benefit of a provisional application must have been filed
during the pendency of the provisional. See, “Request for Continued Examination Practice and
Changes to Provisional Application Practice; Final Rule,” 65 F.R. 50092, 50098, left and middle
columns (Aug. 16, 2000), 1238 O.G. 13 (Sept. 5, 2000).
I am having a hard time understanding why “E” cannot be an answer too?
Clearly, 37 CFR 1.53(c) (2) states:
Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i)
Abandonment of the application filed under paragraph (b) of this section;
(ii)
Payment of the issue fee on the application filed under paragraph (b) of this section;
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or
(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.
How can “Expiration of twelve months” be any different from the ” during the pendency of the provisional Application, unless the choice is partially correct since it is not accompanied by a fee?
Another Search tip:
This site provided very useful info and I really appreciate all those who have contributed to it. I wanted to expand what Christina suggested (in comment number 422) regarding finding the MPEP chapters related to specific “rules” (C.F.R.).
Given a specific law (U.S.C.), if you want to find the corresponding MPEP chapters, you can
1) check the “Subject Matter Index”
2) Jump to letter “S”, (U.S.C. laws are listed under “Statutes”)
3) Use the find function of Adobe reader and look for “U.S.C” – do NOT forget the “dots” in U.S.C.
4) You can see the correlation between the U.S.C. laws and MPEP chapters.
I have passed the exam on May 19, 2010. First I must thank this forum for providing so much useful information. Here is my feedback.
I used three weeks to prepare. The first week I was reading the MPEP study guide borrowed from a friend. I believe there are a lot of similar materials available. Cannot say it helps the exam directly but it is useful to have a general understanding of the whole system. In the second week I went through the 2002 and 2003 exams thoroughly. I read the explanation of the answers carefully and located every citation in the MPEP. This is proved to be helpful for doing search in the exam. The last week went through this forum including all the post and comment. This is the most important part I think.
During the exam I found around 40 repeated questions, 30 questions about familiar items, and 30 questions which I had never seen. Therefore by finishing the 70 repeated and familiar questions will guarantee your success. I also had one hour in each section to do the searching, that gave me another extra 10 answers, so I guess I should get around 80 points.
Following are some questions I still have a little memory, I tried my best to write them down:
1. a clerk of a practitioner asks the USPTO in person of the status of an application of a competitor with the serial number, what the USPTO will do. Answer may be: the caller’s association with the application cannot be verified, no information con¬cerning the application will be released.
2. a new ground of rejection: what should the applicant do: reopen or rehearing. Another question is if the applicant submit amendment to the examiner and order a rehearing too, what should the board do: wait for the examiner or give the rehearing.
3. PCT: US provisional — IA — missing claim, at the provisional’s anniversary day, what should the practitioner do: (a) fax to USPTO (b) express mail to USPTO (c) fax to USRO.
4. who can sign: A and B are joint inventors, they assigned 40% interests to company C, and 40% to company D, who should sign? All of them.
5. A, B, and C are identified as inventors of an application, B’s address is an error, how to correct it (which answer is incorrect)?
(A) Submit supplemental data sheet with all 3 correct addresses and 3 signatures.
(B) New declaration, only changes of B’s address, only B’s signature.
(C) If A’s address is also wrong, declaration with A and B’s address, A and B’s signatures.
(D) Declaration identify A, B, and C, with addresses, only B’s signature.
(E) Identify A, B, and C, with all 3 signatures.
6. Drawing:
(A) must be formal when filed.
(B) cannot be substituted after filing.
(C) cannot be black/white photograph.
(D) …
(E) examiner can require a drawing even it’s not necessary to understand the embodiment.
7. what can be signed by an assignee without recording.
8. the inventor gave part of the interest to the practitioner as commission, the inventor then diseased. How it the power of attorney.
9. PCT, an IA has no abstract, after the search an abstract is added by the ISA, the applicant doesn’t agree with the abstract after reading the report, what can he do?
Anyone have the study guide from freepatentbar.com? It’s not on their website anymore, and I was counting on using it !!!!
If you still have it, you are authorized to share it based on the Creative Commons Share-Alike License (http://creativecommons.org/licenses/by-nc-sa/3.0/us/).
Someone please help! My email is patents.dude@gmail.com .
I’ll throw it up on DocStoc if someone sends it along!
new starter, where can I buy a second hand PLI home study material?
hi yqc…im selling my pli materials…are u still interested?
Hi im selling my PLI patent bar exam materials for $600 (+S&H). Please let me know if anyone is interested. the materials are current. includes lecture audio cds, study materials, workbook, exam software. let me know if anyone needs more details
Thanks!!
I took the test today and passed. I saw a lot of repeats, at least 40%, there were some majorly modified repeats with similar fact patterns but enough changed to change the answer. Most of the questions I had never seen were not very difficult to look up. First half I barely finished in time, second half I finished with about fifteen minutes. I went slow because I was double checking answers, even ones verbatim because often times they put “not” and such where they shouldn’t be in an attempt to trip you up. If I had to guess what my “actual” score was I would say i maybe missed 20, but I don’t think I even missed that many.
I studied approximately 80~ hours for the exam over about 3 1/2 weeks. I started off at about 3 hours a day for the first week and a half, the second week and a half I was studying about 6-7 hours a day. First thing I will say is, if you’re a “self-starter” and don’t need someone to sit you in a desk and force you to read DO NOT PAY FOR THE CLASS. I spent $30 on a 180 page e-book off amazon. Although the book didn’t get in to the really detailed specifics, it explained the general topics to me in basic terminology so I could understand how all of the different parts of the MPEP interact. After that I went to the practice exams. I’ll repeat what’s been repeated here at least 100 times, KNOW THE OLD EXAMS. Even if you don’t see repeats, the same concepts are tested…by knowing the old questions and answers (as well as understanding why the answer is right), you’re learning the MPEP whether you realize it or not. I was extremely nervous going in, and yes I had a lot of repeats, but the ones that weren’t repeats I could eliminate at last 2 or 3 answers immediately because I understood the material well enough. Also, I saw about 10 of the questions from the “new” section on the exam, so definitely study those.
Buy this, it’s $26! You get it almost IMMEDIATELY. It will tell you EVERYTHING you need to know to understand the basic concepts, then you learn through osmosis doing problems. The PCT section of this book for example helped immensely in understanding the process. My personal advice is do not spend $2k+ on a class, and do not spend $600 on a home study course. The old exams are available on this site, as well as the answers….that’s all you need in combination with this book.
The book is called Patent Bar Exam: The Ultimate Study Guide. It’s $29.99 on amazon. I would recommend it to anyone. As I said, it won’t teach you everything you need to know to pass the patent bar, but if you know nothing about the MPEP it is a great starting tool.
Congratulations to Stephen who just passed! I’m taking the exam on September 7th. Could someone let me know if the mpep is presented as a separate window so that the question’s answers can be viewed at the same time one is reviewing the mpep? I don’t plan to rely on the mpep very much at all, but since this will be my very first computerized exam, I’d appreciate any comments about problems. Also, are the pct rules available? Many thanks!
It is a separate window that you can size however you would like. You can only have one chapter of the MPEP open at any time. It was basically exactly like I was taking the exam on my personal computer using Adobe Reader 5.0.
Oh, and yes you can view the MPEP and the questions at the same time.
Hi, I am preparing to take the test in a month. Do they still test questions on Chapter 500 nowadays?
Hi im interested in the latest PLI review course Home Study kit (complete set). If there is anyone who wants to sell it, please send me a contact ( eritanijp@yahoo.co.jp). Thanks!!
Anybody selling a patent bar review kit? If so e-mail me at kenneth.a.knox@gmail.com
I passed the exam yesterday!
Thank you to everyone who contributed to this great website. It feels super sweet to be done!
How I studied:
First I outlined MPEP 2100 (using the online MPEP) capturing all the headings and reading some sections, time consuming but worth it
Then I studied all the repeat questions listed on this site
Next I took all the exams from 2002 and 2003 as a closed book exam, then I studied the answers, if I had more time I would have done 2001 exams too.
Studied PCT, Appeals process, studied 102(e) flow chart in MPEP 700
I also became very comfortable with searching the laws (35 USC) and rules portion (37 CFR) for answers. Learning to use the MPEP index is very useful too.
I read through most of the laws up through 35 USC 121.
I studied certificates of correction, reissue, and reexam until I understood when each is appropriate
Also, I googled and found some patent bar outlines. I skimmed these, but some of them had incorrect information so caveat emptor.
The exam:
The morning session was definitely way harder than the afternoon so don’t let that rock your confidence if that happens to you.
I was surprised by how many questions were repeats. Study old exams!
Some of the new questions listed on this site popped up too, but I didn’t study those too much.
As expected, lots of PCT and Appeals questions. Unexpected, assignment and a fair amount of reissue questions.
I referred to the 102(e) examples and flow chart MPEP 700 a number of times throughout the exam.
Good luck to everyone!
I need a patent bar review course study material-PLI , anyone selling??
Hey there,
I am might be selling as of this weekend. I take the exam tomorrow. If I pass then I can sell to you. I will share my insights after the exam.
Where can I reach you?
Question – when working on questions in the Longacre books, is it better to have access to the MPEP or just try the questions directly from memory?
I just passed the patent bar on Sunday, first try! Since this site was such a HUGE help to me, I thought I should also comment and share what I learned.
How I studied:
First, I completed the PLI home study course. This was very helpful for familiarizing myself with general concepts and procedures, and probably more so for me than others of you since I am not a lawyer and had not been exposed to IP law prior to this course. I did not do the PLI recommended post-course materials, nor did I take John White’s suggestions of reading Ch. 1800 twice and 2100 3X. This was a wise decision for me and allowed me to spend more time on appeals, reexam and reissue as others have posted these areas as being heavily tested recently. Once I finished with the course, I went through the audio CDs 2-3 more times during my 1 hour work commute. At the same time, and probably the most important part of my studying, I did the following: (1) took and retook the 2002 and 2003 practice exams and (2) noted and studied the subject matter that others have posted as heavily tested on this site.
The exam:
As others have mentioned, the morning session was much more difficult than the afternoon (I finished in the morning with just 1 minute to spare). Luckily the afternoon session had may repeats, some verbatim from the old exams and even more that tested similar concepts. The exam was not as heavy on PCT or 102(e) issues as I had thought. Also there were quite a few questions on assignment, reissue and reexam. There were 2-3 questions on maintence fees and small entity status and some questions on foreign priority. There were a fair amount of questions from Ch. 2100, but most were repeats from old exams. I think if you use the old exams as a guide and make sure that you know these questions as well as the concepts being tested with them, you should do fine.
Good luck!!!
Hi,
I plan to take the patent bar exam in 2011, and just find out this website. I saw lot of fellows here were talking about the study guide from freepatentbar.com. unfortunately, the website seems not working any more. Is anybody still keeping a copy of the study guide? is it possible to send it to my email: nycamydream@yahoo.com? Thanks a lot. Your help are deeply appreciated!
I just took it for the second time on January 3, 2010 and I passed. Now it’s time to give back to the website that helped me out SO MUCH. Anyone that is interested in passing–just follow the advice that is given by the posts here. I took the following steps:
1) Read through and absorb every study guide. For the most important chapters, I wrote notes on them, said them aloud and got tested on their study guides by a friend. Major chapters to focus on include 2, 3, 4, 6, 7, 12, 18, 21, 22, 23, and 26.
(Appeals, ex parte reexamination and inter partes reexamination seem to be tested a lot more now than seen on the practice exams, so it’s good to look over the corresponding chapters)
2) Do all of the practice exam questions until 2000 or 2001 at least twice. The test can have dozens of repeats. You’ll hate yourself for losing points on the questions that you already encountered. When you get them wrong, spend time trying to understand the explanations.
3) Read the information on new and repeat questions posted on this website. Some people have a really good ability to remember their test questions! I truly thank them–because a lot of those questions seem to pop up on the test.
4) If you didn’t pass and if you have the ability to do so, GO TO VIRGINIA AND LOOK AT YOUR TEST. It is completely worth it to know what you got wrong.
———————————————————–
Question Topics that I Remember from my Test:
1) If the Board issues a new ground of rejection, what are the possible consequences?
2) Spanish/Telephone question
3) If you submit the requirements for filing a provisional application but your application is missing a drawing (Figure 3), what can you submit to make sure that it is still accorded a filing date?
4) A patent application was filed with two joint inventors. One of the inventors, Inventor A, assigns his half of the patent to XYZ. Inventor B refuses to do so. The patent issues. XYZ later learns that, of the 10 claims in the patent, 1-5 were invented by Inventor A and 6-10 were invented by Inventor B. The assignee and Inventor B want to split the patent. What are their options?
———————————————————–
The above may not be in verbatim, but those are the questions that I was vaguely able to recall. If I remember more, or if I remember more details, I will post them.
Hi Folks: Thanks for the great website and all the comments. They are very helpful especially to a newbie like me. I am planning to give the exam in June of this year and was wondering if someone can provide me any insight for what worked best for them.
I do not have any background in law.
My initial thought was to read by myself (Ultimate Patent Bar By John Watts), and do the practice questions as a lot tend to be repeated, but I want some opinions from the folks who gave the exam recently.
If you can suggest taking an online course (courses like PLI are very expensive) – self paced or any other book or studyguide, I would certainly appreciate that. Thanks.
Just passed the exam today, thanks to the help of this site!
Selling my PLI home study course if anyone is interested, email me at dmk352@gmail.com. It’s basically in new condition. Thanks!
Does anyone have an idea of how the test will change after April. What are the major differences between the MPEP E8R4 and R8? Or does anyone know a good site that highlights the changes? Thanks!
http://www.uspto.gov/ip/boards/oed/exam/exam_reg_prac_update.jsp
Dear Patjd/ or any patent experts on this website.
As an established patent attorney/agent, what is your suggests for me to find a job as a patent agent or scientific advisor. How should I start my job hunting
Recently I passed the patent bar exam and in the process of registration to practice before USPTO.
I have Ph.D in Biology
I also have some 2 years experiment at University office of Patents and licensing.
Thanks in advance!
Hey all, wanted to say thanks for all the helpful information and the community that has come together to help so many people pass the patent bar.
I took the exam on Saturday and passed on the first try. I spent more than a year of loose on and off studying and finally decided to get registered. Found out that they were going to be making additions to the exam, so I secured my exam date three weeks from receiving my notice. The bulk of my serious study was simply reviewing this site, the outline, the 68 recent repeats, and the 2001-2003 old exams.
I don’t know how much it will help with the current black out dates and the upcoming additional material that will be included, but my exam had to have been at least 50% repeat questions (broom, mexico, metal baseball, prima facie obviousness, etc…) either verbatim or just a reuse of the fact pattern with a slightly different question on the same subject matter. And like the other recent posters have stated KNOW your 1200 Appeals and 1800 PCT. There must have been at least 30 questions combined on my exam relating to these two chapters.
Again thanks for all the helpful advice. Best of luck to those up and coming test takers.
I’m starting law school this Fall and want to get the Patent Bar under my belt. Anyone have advice about the new exam? Should I bother purchasing an old PLI home study course or do I need to cough up the big bucks for an updated course?
Does anyone have an outline or summary of the new material that they would be willing to share?
Thanks.
“The House yesterday approved a bill that favors inventors who file their patent applications first as opposed to the current system that operates on a first-to-invent basis. The change will bring the U.S. into line with Europe and Japan. The legislation also takes steps to help the underfunded U.S. patents office deal with a backlog of 1.2M pending applications, which forces inventors to wait three years for a decision. The House now has to reconcile its bill with that of the Senate after the latter approved similar measures in March.”
Seems this will def. affect the later MPEP version.
Anyone interested in selling the PLI home study course? Please email me at cjgalfano@hotmail.com
Just passed the exam. I only used this website and the MPEP to study (with a couple law classes in patent policy). Thanks a bunch.
Recently registered for the patent exam and I am looking for study partner in the Chicago area.
Anyone in Chicago area interested in putting together study a group for the patent bar feel free to e-mail me at rob@mouradlaw.com
Hello, this is a little less related to studying for the Patent Bar and geared more towards professional opportunities afterwards.
I am planning to take the Patent Bar prior to entering law school. According to the registration rules, if one passes the exam and does not send in proof of good standing with the Bar, then one is registered as a Patent Agent rather than a Patent Attorney. Obviously, I would not meet the 2 year deadline to prove good standing with the Bar if I complete the Patent Bar prior entering law school. So here is my question: will I be professionally limited in any way if I take the Patent Bar, become registered as a Patent Agent, and then take (and hopefully pass) a state Bar in the future? For instance, could I work as an
in-house Patent Counsel for Google? Alternatively, would I be able to change my registration to Patent Attorney once I passed a state Bar?
Thanks in advance!!
I’m a PhD scientist working in IP management and business development; and thinking seriously about taking the patent bar. I am curious about how the patent bar exam will change after patent reform is implemented. Will the info learned by freshly passed individuals be obsolete? Will practicing attorneys be required to pass a new bar exam that reflects the new patent laws?
Are there any differences on the examination when you are applying for a patent agent rather than a patent attorney?
No.
I just passed the test! This website was invaluable. My advice to future test takers: know all of the repeat questions by heart. You can answer a good 30% of the patent bar questions by reading the first sentence of the question. I was also tested very heavily on 2100 obviousness. Good luck.
Hi Cory,
What study materials you used for the exam? Could you please advise me as where can I get those patent bat study materials?
Thanks
Lakshmi
Awesome blog.
Anyway regarding the Gadhafi comments… I agree. NATO is an evil organization that serves no purpose. “Money” and “Oil” are their main objective.
Is anyone in the San Francisco bay area selling their exam prep materials? Please email with course, condition and asking price.
wj_fisher@yahoo.com
Thanks.
I just started the PLI course and found a pretty nifty way to watch the online PLI videos in half the time. Step 1: Download a flash-player speed up program such as Enounce MySpeed; Step 2: Turn on MySpeed and press play on the PLI video player; Step 3: To avoid excessive buffering, press pause after pressing play and leave it there for 5 to 10 mins (you can use this time to review the printed PLI materials); Step 4: Press play on PLI player and move MySpeed speed bar to 1.5 x or 2.0x.
I also figured out a way to play the PLI videos on my iPad 2 (which does not support flash). You just download an app that can support a flash environment and play the player through the app’s web browser.
Is there any good way to search for specific CFR’s in the MPEP PDF file?
Thanks,
Walt
What would I need to take into account if I get an old 2004 PLI study course? Would it be worthwhile to spring for the newest version?
Hi all,
I’m a PhD (Scientist…biology + Physics) with a background in ChemE / Chemistry. I have about 3 months of downtime before my next job, and am thinking of taking the exam (ok, I AM taking the exam). Does anyone 1) have any patent bar materials they are looking to offload? 2) Any suggestions or templates of how they divided up their time studying? I’m compiling people’s comments of how to start wading through all of this, and didn’t know if someone had used some sort of calendar to keep track of what they studied, etc, etc.
Any help would be appreciated!
I have been using Bullseye and John Watts’ e-book, each costing about $30 online, as well as this site.
Bullseye contains a good proposed study schedule, and Watts is an easy read, absolutely packed with helpful questions, summaries, and examples.
Between those two items and the repeat/recent test questions listed on this site, I think you’ll have everything you could ever need.
Thanks Mambo5. I have a feeling i’m not alone in feeling a tad overwhelmed the first day of studying. I think the rather chaotic order of the MPEP is what is grating my OCD tendencies…time to just learn / understand, and then memorize the crap out of the questions/answers.
I think you’re right – there is no ideal starting point for this material. Just pick a pony you like and jump on the carousel pretty much anywhere!
Looks like today is the day for Passers! I also got the preliminary pass today, and now proudly wear the goggles and cape of a patent superhero!
A word about preparation. I used this site plus Bullseye plus John Watts’ e-book – all terrific. Spent an honest month studying full-time, after having already read the Bullseye guide beforehand. Compressed the Bullseye timeline to fit my timeframe.
By the last few days before my test, I was getting in the 90s on the old exams, doing them closed book.
The real thing was still quite challenging, I felt. I went through the whole test first and answered what I could “closed book,” marking the ones I was unsure of. This took 1:15 to 1:30. Then I went back through the marked Q’s and did the lookups.
I used all the time both sessions.
Knowing the repeat questions from here really helped!
1Two questions about new grounds for rejection from the Board on an appeal go something like this:
The Patent Board of Appeals (affirms in one Q/overturns in the other Q) the examiner’s rejection of claims 1-10, and also gives its own new grounds for rejection. The practitioner amends the claims to overcome all rejections. What actions of the examiner are in accord with the policies of the USPTO?
Answer choices ranged along the following lines:
Allow the Application
Reject the Claims
Examine only the amended claims 1-10, and following completion of that process forward to the Board for treatment of the new grounds rejection.
2A PCT app is submitted to US RO on Date 1, but is missing some drawings and the name of an inventor. The RO invites the applicant to submit the missing items. Applicant submits the missing drawings on Date 2, and the inventor’s name on Date 3.
What is the filing date for the PCT app? Ans: Date 3.
3When a Protest is filed, what items are required to be included. Items 1-5 were listed, including 1 a list of references 2 a discussion of the significance of the references 3 the protester’s name. . . 5 an IDS.
4Trade secret in envelope
5Accelerated examination
Repeats:
52 tables, ½ page each – the submission included 2 CDs (One for part 1, One for Part 2), Ans: the submission was improper because it did not provide copies of the CDs.
Examiner can reject a claim that the District Court found to be not invalid.
Potter B
Moondust eraser
Q7 variant – reclaiming benefit
Lip Gloss
Suspended practitioner
No small entity fee reduction for recording
Broom
Fan
Tommie and Joe
112 para 6
Indef claim using “high”
900 claims – Ans: phone call, select a few claims to examine
Which submission cannot be made with a copy of a signature
Spanish phone keypad variant
For which situation is a 1.131 affidavit NOT appropriate to overcome rejection
When is canceled matter in a patent app prior art
How many dependent claims are there? – there were 8
102(f) Q
102(g) Q
Restriction of joined claims
Q about whether a claim should be rejected on enablement or written description grounds
Bloc
Inert gas
150 degrees versus 300 degrees melting point
Good luck everyone
Congrats M5! Thanks for the success story and don’t get lost in the stratosphere as you soar with your cape!
Also, did you happen to see a Q on India and outsourcing? Did you have issues with looking stuff up in the supplemental materials?
Cheers to you.
JP
Thanks JP,
Haha – Not to worry – after tonight, I will return to to my day job as Clark Kemp, mild mannered engineer for the Daily Plant.
I did not see the India outsource question, and although I did have one KSR question, I did not try to open the supplementary materials after reading all the horror stories on here. Instead I just took my best swag at it “closed book.”
Good one M5 – Guess you won’t be around anymore, but thank you for being one of the “my Pat Bar” heroes here!
JP
Here’s my parting contribution, to hopefully give back a smidgeon of what this site gave me: I took all the repeat questions from old tests and cut and pasted them into custom tests with answer keys and references to where each question came from.
Please find the 4 practice tests below. I simply pasted them from my WORD doc. Hopefully you can copy, paste into your own WORD doc, and print out your own practice tests for repeat Q drilling. This really helped me.
1. 4.00.a.6. Which of the following statements is true regarding a product-by-process claim?
(A) Product-by-process claims cannot vary in scope from each other.
(B) Product-by-process claims may only be used in chemical cases.
(C) A lesser burden of proof may be required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima facie case of obviousness when the product is claimed in the conventional fashion.
(D) It is proper to use product-by-process claims only when the process is patentable.
(E) It is proper to use product-by-process claims only when the product is incapable of description in the conventional fashion.
2. 4.00.p.19. Which of the following is true?
(A) A final decision by a United States District Court finding a patent to be invalid
will have no binding effect during reexamination since the PTO may still find the
claims of the patent to be valid.
(B) A final decision by a United States District Court finding a patent to be valid will
have no binding effect during reexamination since the PTO may still find the
claims of the patent to be invalid.
(C) Once the Court of Appeals for the Federal Circuit determines that the claims of a
patent are valid, the USPTO may not find such claims invalid based upon newly
discovered art.
(D) If a patentee fails to disclose prior art to the PTO during regular prosecution, the
only way that a patentee can disclose later discovered prior art to the PTO after
issuance is by filing a request for reexamination.
(E) Once a patent claim is found valid during a District Court Proceeding then the
patent claims are entitled to a higher standard of patentability and the presumption
of validity can only be rebutted by clear and convincing evidence in a concurrent
or later reexamination proceeding.
3. 10.00.a.2. On December 31, 1998, Sam Practitioner files a notice of appeal in a patent application assigned to ABC Corp. after the examiner has rejected all of the claims on prior art. Within two months he sends in his appeal brief and three months after the examiner’s answer is filed the case is sent to the Board of Patent Appeals and Interferences (Board). Subsequently, while reading the Official Gazette Sam notices that a patent issued to XYZ Corp. on October 26, 1999, contains claims which read on an unclaimed embodiment in the ABC application, which is an invention that is not within the scope of the invention claimed in the ABC application. The ABC application was filed one month after the issuance of the XYZ patent. Upon learning of the XYZ patent, ABC Corp. wants to provoke an interference by adding additional claims to its
application relating to the previously unclaimed embodiment. It is October 18, 2000 and Sam
comes to you for advice. Which of the following is the best and correct course of action?
(A) Since the ABC application is at the Board of Patent Appeals and Interferences
already, Sam need only request that the case be transferred to the Interference part
of the Board where an interference can be declared between the ABC application
and the XYZ patent.
(B) Sam should file an amendment adding the claims copied from the XYZ patent and
the Board is required to enter the amendment.
(C) Sam should promptly file an amendment containing the claims copied from the
XYZ patent and request entry. If the Board declines to enter the amendment, Sam
should file a separate, continuation application no later than October 26, 2000,
containing the claims copied from the XYZ patent as well as claims previously
appealed, and then, to avoid the rendering of a decision of the Board, he should
promptly inform the clerk of the Board in writing that they have decided to refile
and abandon the application containing an appeal waiting a decision.
(D) Sam should file an amendment containing the claims copied from the XYZ patent
and ask that the interference between the ABC application and the XYZ patent be
considered while the case is at the Board.
(E) Sam should wait until the appeal is decided before filing an amendment to
incorporate claims copied from the XYZ patent and to provoke an interference.
There is no benefit to filing new claims since only allowable claims will be
considered during an interference.
4. 10.00.a.50. Which of the following is not a USPTO recommendation or requirement?
(A) Claims should be arranged in order of scope so that the first claim presented is the least restrictive.
(B) Product and process claims should be separately grouped.
(C) Every application should contain no more than three dependent claims.
(D) A claim which depends from a dependent claim should not be separated from that dependent claim by any claim which does not also depend from the dependent claim.
(E) Each claim should start with a capital letter and end with a period.
5. 10.00.a.23. Mitch and Mac are named inventors on an international application that is filed in the USPTO Receiving Office, and designates the United States of America. Mac now indicates that he will not sign the Request for the international application. Mitch wishes to proceed with the Request and seeks the advice of their patent agent. Which of the following answers accords with the provisions of the Patent Cooperation Treaty?
(A) Mitch’s agent should sign the Request and accompany it with a statement
indicating why it is believed that Mac refuses to proceed with the Request.
(B) Mitch should sign the request for himself and also sign on behalf of Mac.
(C) Mitch should sign the request and seek a court order to obtain Mac’s signature.
(D) Mitch should sign the Request and accompany it with a statement providing a
satisfactory explanation for the lack of Mac’s signature.
(E) Mitch should sign the Request and Mitch’s agent should sign on behalf of Mac,
since he continues to represent Mac.
6. 4.01.p.10. Sally, an employee of Ted, conceived of and reduced to practice a spot remover for Ted on May 1, 1998. Sally’s spot remover was made from water, chlorine, and lemon juice. On June 2, 1998, Sally filed a nonprovisional U.S. patent application for the spot remover, and assigned the entire rights in the application to Ted. Sally’s assignment was not recorded in the USPTO, but was referenced in her application. On June 12, 1999, Jane, also an employee of Ted, having no knowledge of Sally’s spot remover, conceived of and reduced to practice a spot remover for Ted. Jane’s spot remover was made from carbonated water, chlorine, and lemon juice. On May 25, 1999, the USPTO granted Sally a patent. On November 5, 1998, Jane filed a nonprovisional U.S. patent application for the spot remover. As noted in Jane’s application, Jane assigned the entire rights in her application to Ted. Jane’s assignment was duly recorded in the USPTO. The examiner mailed a non-final Office action rejection under 35 U.S.C. § 103 to Jane in March 2001, citing the patent to Sally as prior art. Which of the following, if timely filed by Jane, would be effective in disqualifying Sally’s patent?
I. An affidavit by Jane stating that the application files of Sally and Jane both refer to
assignments to Ted.
II. A copy of Sally’s assignment to Ted, clearly indicating that common ownership of Jane’s
and Sally’s inventions existed at the time Jane’s invention was made.
III. An affidavit by Ted stating sufficient facts to show that there is common ownership of
the Sally and Jane inventions and that common ownership existed at the time the Jane
invention was made.
(A) I.
(B) II.
(C) III.
(D) II and III.
(E) None of the above.
7. 10.01.a.5. You have agreed to represent an independent inventor in connection with a patent application that was filed in the USPTO by the inventor on a pro se basis. As filed, the
application included a detailed written description that, when viewed together with four
accompanying color photographs, enabled one of ordinary skill in the pertinent art to make and
use the invention. The application was filed with an inventor’s declaration in compliance with
37 CFR 1.63, a small entity statement (independent inventor) under 37 CFR 1.27, and all
necessary small entity filing fees. MEGACORP, a very large multi- national corporation,
licensed rights in the invention after the application was filed.
You have been asked to suggest steps to remove any formal objections that can be expected from
the patent examiner, without incurring unnecessary government fees. You determine that the
first color photograph is the only practical medium by which to disclose certain aspects of the
claimed invention, but that the substance of the remaining photographs could readily be
illustrated through ordinary ink drawings. You correctly recall that the Office announced in the
Official Gazette in May 2001 (1246 OG 106) that it is sua sponte waiving 37 CFR 1.84(a)(2)(iii),
and is no longer requiring a black and white photocopy of any color drawing or color
photograph. Which of the following represents the most reasonable advice to the independent
inventor?
(A) Submit a request for approval of drawing changes wherein the first photograph is
labeled “Figure 1” and the remaining photographs are cancelled in favor of
corresponding ink drawings labeled Figures 2 through 4; and immediately
withdraw the claim for small entity status because of the license to MEGACORP.
(B) Submit a request for approval of drawing changes wherein the first photograph is
labeled “Figure 1” and the remaining photographs are cancelled in favor of
corresponding ink drawings labeled Figures 2 through 4; and submit a petition for
acceptance of Figure 1 in the form of a color photograph along with three sets of
the color photograph, a proposed amendment to insert language concerning the
color photograph as the first paragraph of the specification and the required
petition fee. The photographs must be sufficient quality that all details in the
photographs are reproducible in a printed patent.
(C) Submit a request for approval of drawing changes wherein the first photograph is
labeled “Figure 1” and the remaining photographs are cancelled in favor of
corresponding ink drawings labeled Figures 2 through 4.
(D) Immediately withdraw the claim for small entity status because of the license to
MEGACORP and submit to the USPTO the difference between the small entity
filing fee and the large entity filing fee.
(E) File a rewritten application as a continuation application including a color
photograph as Figure 1, ink drawings as Figures 2-4, a new inventor’s declaration
and a small entity filing fee.
8. 10.01.p.1. A U.S. patent application discloses a first embodiment of an invention, a composition made of known materials in equal amounts by weight of A, B, and C. The application discloses a second embodiment of the invention comprising equal amounts by weight of A, B, and C, and an effective amount of D, a known material, to reduce excess moisture from the composition. The application also discloses a third embodiment of the invention comprising equal amounts by weight of A, B, and C, and an effective amount of D to reduce the acidity of the composition.
The application fully discloses guidelines for determining an effective amount of D to reduce
excess moisture from the composition, and determining an effective amount of D to reduce the
acidity of the composition. The application discloses that the amount of D needed to reduce
excess moisture from the composition differs from the amount of D needed to reduce the acidity
of the composition. Which of the following claims, if included in the application, provides a
proper basis for a rejection under 35 U.S.C. § 112, second paragraph?
(A) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and
an effective amount of D to reduce the acidity of the composition.
(B) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and
an effective amount of D.
(C) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and
an effective amount of D to reduce excess moisture from the composition.
(D) Claim 1. A composition comprising: equal amounts by weight of A, B, and C.
(E) None of the above.
Questions 11 and 12 are based on the following factual background. Consider questions 11 and 12 independently of each other.
Applicant files a patent application in Japan on February 28, 1996. Applicant files a PCT international application designating the United States on February 27, 1997, based on the Japanese application. The international application is published in English on August 28, 1997. The international application enters the national stage in the United States on August 28, 1998. The USPTO publishes the application on June 7, 2001 at the request of the applicant. The application issues as a United States patent on December 4, 2001.
9. 4.02.a.11. When examining an application filed on or after November 29, 2000 or any application that has been voluntarily published, what is its earliest possible prior art date, for the June 7th U.S. published application in view of 35 U.S.C. § 102(e) as amended by the American Inventors Protection Act of 1999?
(A) February 28, 1996.
(B) February 27, 1997.
(C) August 28, 1997.
(D) August 28, 1998.
(E) June 7, 2001.
10. 4.02.p.2. For purposes of determining whether a request for continued examination is in
accordance with proper USPTO rules and procedure, in which of the following situations
will prosecution be considered closed?
(A) The last Office action is a final rejection.
(B) The last Office action is an Office action under Ex Parte Quayle.
(C) A notice of allowance has issued following a reply to a first Office action.
(D) The application is under appeal.
(E) All of the above.
11. 10.02.a.1. In accordance with the MPEP and USPTO rules and procedure, an application for patent may be made on behalf of a joint inventor in certain situations. Who, by petition, may make application on behalf of a joint inventor who has refused to sign the application (“nonsigning inventor”), if the other joint inventor (“signing inventor”) executes the application?
(A) A person other than the signing inventor, to whom the nonsigning inventor has assigned the invention.
(B) A person other than the signing inventor, with whom the nonsigning inventor has agreed in writing to assign the invention.
(C) The signing inventor.
(D) A person other than the signing inventor, who shows a strong proprietary interest in the invention.
(E) All of the above.
12. 10.02.p.1. Which of the following is not in accordance with the provisions of the MPEP?
(A) Where joint inventors are named, the examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application.
(B) Under 35 USC 119(a), the foreign priority benefit may be claimed to any foreign application that names a U.S. inventor as long as the U.S. named inventor was the inventor of the foreign application invention and 35 USC 119(a)-(d) requirements are met.
(C) Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 USC 103 or 35 USC 116, the U.S. application may claim benefit under 35 USC 119(a) to each of the foreign applications provided all the requirements of 35 USC 119(a)-(d) are met.
(D) One of the conditions for benefit under 35 USC 119(a) is that the foreign application must be for the same or a nonobvious improvement of the invention described in the United States application.
(E) If a foreign application for which priority is being claimed under 35 USC 119 is filed in a country which does not afford similar privileges in the case of applications filed in the United States or to citizens of the United States and the foreign country is not a WTO member country, any claim for the foreign priority thereto by a U.S. application will not be effective.
13. 4.02.a.1. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements is most correct?
(A) The same evidence sufficient to establish a constructive reduction to practice is necessarily also sufficient to establish actual reduction to practice.
(B) Proof of constructive reduction to practice does not require sufficient disclosure to satisfy the “how to use” and “how to make” requirements of 35 USC 112, first paragraph.
(C) A process is reduced to actual practice when it is successfully performed.
(D) The diligence of 35 USC 102(g) requires an inventor to drop all other work and concentrate on the particular invention.
(E) The diligence of 35 USC 102(g) does not impose on a registered practitioner any need for diligence in preparing and filing a patent application inasmuch as such the practitioner’s acts do not inure to the benefit of the inventor.
14. 4.03.p.3. In accordance with the USPTO rules and the procedures in the MPEP, in which of the following instances is the reference properly available as prior art under 35 USC 102(d)?
(A) A U.S. patent application is filed within the one year anniversary date of the filing date of the foreign application. The reference is the foreign application.
(B) The applicant files a foreign application, later timely files a U.S. application claiming priority based on the foreign application, and then files a continuation-in-part (CIP) application, and the claims in the CIP are not entitled to the filing date of the U.S. parent application. The foreign application issues as a patent before the filing date of the CIP application and is used to reject the claims directed to the added subject matter under 35 USC 102(d)/103. The reference is the foreign application.
(C) The applicant files a foreign application, and later timely files a U.S. application claiming priority based on the foreign application. The examined foreign application has been allowed by the examiner and has not been published before the U.S. application was filed. The reference is the foreign application.
(D) The reference is a defensive publication.
(E) All of the above.
15. 10.03.a.3. Inventor Joe is anxious to get a patent with the broadest claim coverage possible for the invention. Joe retained a registered practitioner, Jane, to obtain the advantage of legal counsel in obtaining broad protection. Jane filed a patent application for the invention. The inventor heard that, although patent prosecution is conducted in writing, it is possible to get interviews with examiners. Joe believes an interview might hasten the grant of a patent by providing the examiner a better understanding of the true novelty of the invention. Which of the following are consistent with the patent law, rules and procedures as related by the MPEP regarding usage of interviews?
(A) Prior to the first Office action being mailed the inventor calls the examiner to whom the application is docketed to offer help in understanding the specification.
(B) After receiving the first Office action Jane calls the examiner for an interview for the purpose of clarifying the structure and operation of the invention as claimed and disclosed, because the examiner’s analysis regarding patentability in the rejection is novel and suggests that the examiner is interpreting the claimed invention in a manner very different from the inventor’s intent.
(C) Jane has Larry, a registered practitioner in the Washington D.C. area, who is more familiar with interview practice to call the examiner. Jane gives Larry a copy of the first Office action, which suggests that the primary examiner’s analysis is incorrect, and offers to explain why. Jane instructs Larry that because Larry is unfamiliar with the inventor, Larry should not agree to possible ways in which the claims could be modified, or at least indicate to the examiner that Jane would have to approve of any such agreement.
(D) Jane calls the primary examiner after receiving the final rejection, demanding that the examiner withdraw the finality of the final action. When the examiner states that the final rejection is proper, Jane demands an interview as a matter of right to explain the arguments.
(E) (B) and (D)
16. 10.03.p.1. In accordance with the patent laws, rules and procedures as related in the MPEP, for a nonprovisional application to receive a filing date in the USPTO under 37 CFR 1.53(b), all of the following must be filed except:
(A) The basic filing fee required by 37 CFR 1.16(a).
(B) A specification as prescribed by the first paragraph of 35 USC 112.
(C) A description pursuant to 37 CFR 1.71.
(D) At least one claim pursuant to 37 CFR 1.75.
(E) Any drawing required by 37 CFR 1.81(a).
17. 4.00.a.47. Which of the following, if any, is true?
(A) The loser in an interference in the PTO is estopped from later claiming he or she
was the first to invent in a Federal District Court since the loser must win in the
PTO or he/she will lose the right to contest priority.
(B) A person being sued for infringement may file a request for reexamination
without first obtaining the permission of the Court in which the litigation is taking
place.
(C) A practitioner may not represent spouses, family members or relatives before the
PTO since such representation inherently creates a conflict of interest and a
practitioner is likely to engage in favoritism over his/her other clients.
(D) Employees of the PTO may not apply for a patent during the period of their
employment and for two years thereafter.
(E) None of the above.
18. 4.00.p.44. Which of the following statements best correctly describes current PTO practice and procedure?
(A) Where a patent discloses subject matter being claimed in an application
undergoing examination, if the patent’s designation of inventorship differs from
that of the application, then the patent’s designation of inventorship does not raise
a presumption of inventorship regarding the subject matter disclosed but not
claimed in the patent so as to justify a rejection under 35 U.S.C. § 102(f).
(B) The fact that a claim recites various components, all of which can be
argumentatively assumed to be old, provides a proper basis for a rejection under
35 U.S.C. § 102(f).
(C) A person can be an inventor without having contributed to the conception of the
invention.
(D) In arriving at conception, an inventor may not consider and adopt ideas and
materials derived from other sources such as an employee or hired consultant.
(E) It is essential for the inventor to be personally involved in reducing the invention
to actual practice.
19. 4.01.a.40. In June 1998, Jack and Jill, a married couple, are vacationing in Vietnam (not a WTO country) when they encounter a man selling bamboo knives for cleaning fish. The particular curvature of the bamboo both lends support to the knife to prevent it from bending and breaking and facilitates cleaning inside the fish. Jill takes a picture of Jack with the knife cleaning the fish. Subsequently, in November 1998, when Jack returns to the United States he begins to make and sell an identical knife to the one seen in Vietnam. In July 1999, he files a patent application claiming the nearly identical knife. Jack discloses no prior art during the prosecution of his application and fails to mention the knife he saw in Vietnam. The examiner finds no prior art similar to the claimed knife, and Jack is awarded a patent in December 2000. Meanwhile, Jill divorces Jack, and associates with Sam. Unfortunately, Sam is penniless. To raise cash, Sam and Jill begin selling a knife identical to the one Jack produces, only Sam and Jill make their knife out of plastic. The knives of Sam and Jill sell like hotcakes. Jack sues for infringement. Jill and Sam come to you for advice. Which of the following is not true?
(A) Jack is entitled to patent protection since Vietnam is not a WTO country and
evidence of the Vietnamese knife cannot be used against him to reject his patent
claims.
(B) Jack had a duty under 37 C.F.R. §1.56 to disclose his discovery of the bamboo
knife in Vietnam to the examiner during the original patent prosecution.
(C) Since the use in Vietnam was not in this country, it does not constitute a public
use bar under 35 U.S.C. § 102(b).
(D) If Jill’s attorney files a request for reexamination, it will be denied because the
picture is not a patent or printed publication.
(E) Although Jack marketed the invention before obtaining a patent, the patent claims
cannot be invalidated under 35 U.S.C. § 102(a) since Jack’s making and selling of
the knife cannot be used against him under 35 U.S.C. § 102(a).
20. 10.01.a.30. Which of the following is most likely to be considered in a proper obviousness determination?
(A) Evidence demonstrating the manner in which the invention was made.
(B) Evidence that a combination of prior art teachings, although technically
compatible, would not be made by businessmen for economic reasons.
(C) Evidence demonstrating the level of ordinary skill in the art.
(D) Evidence that one of ordinary skill in the art, after reading Kat’s application,
would readily be able to make and use Kat’s invention without undue
experimentation.
(E) Evidence that the distance finder described in the July 2000 golf magazine has
enjoyed great commercial success.
21. 10.01.p.46. According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131?
(A) A rejection properly based on statutory double patenting.
(B) A rejection properly made under 35 U.S.C. § 102(d) based on a foreign patent
granted in a non-WTO country.
(C) A rejection properly made under 35 U.S.C. § 102(a) based on a journal article
dated one month prior to the effective filing date of the U.S. patent application.
Applicant has clearly admitted on the record during the prosecution of the
application that subject matter in the journal article relied on by the examiner is
prior art.
(D) A rejection properly made under 35 U.S.C. § 102(b) based on a U.S. patent that
issued 18 months before the effective filing date of the application. The patent
discloses, but does not claim, the invention.
(E) None of the above.
22. 4.02.a.50. Which of the following is not required in order for a foreign application that has matured into a foreign patent to qualify as a reference under 35 U.S.C. § 102(d)?
(A) The foreign application must have actually been published before the
filing of an application in the United States, but the patent rights granted
need not be enforceable.
(B) The foreign application must be filed more than 12 months before the
effective filing date of the United States application.
(C) The foreign and United States applications must be filed by the same
applicant, his or her legal representatives or assigns.
(D) The foreign application must have actually issued as a patent or inventor’s
certificate before the filing of an application in the United States. It need
not be published but the patent rights granted must be enforceable.
(E) The same invention must be involved.
23. 4.02.p.38. Which of the following can correct the inventorship of a patent application in
accordance with proper USPTO practice and procedure?
(A) An unexecuted nonprovisional application was filed January 3, 2001
naming Jones and Smith as inventors. Smith was named an inventor in
error. A Notice to File Missing Parts of Application was mailed by the
Office, that requested a surcharge and an executed oath or declaration
under 37 CFR 1.63 by Jones and Smith. A registered practitioner in
timely response to the Notice submitted the requested surcharge and a
declaration under 37 CFR 1.63 that named only Jones as the inventor,
which declaration was only executed by Jones. The registered practitioner
had determined that a request to correct inventorship under 37 CFR
1.48(a) was unnecessary. No papers were submitted, by Smith, clarifying
that she is not an inventor.
(B) A nonprovisional application was filed January 3, 2001 with a declaration
under 37 CFR 1.63 naming Jones and Smith as inventors, which
declaration was signed only by Jones. Smith was named an inventor in
error. A Notice to File Missing Parts of Application was mailed by the
Office that requested a surcharge and an executed oath or declaration by
Smith. A registered practitioner timely responded to the Notice by
submitting the requested surcharge and a new declaration under 37 CFR
1.63 that identified Jones as the sole inventor, which declaration was
executed only by Jones.
(C) A nonprovisional application was filed February 28, 2000 that improperly
named Jones as the sole inventor in a declaration under 37 CFR 1.63.
Only Jones executed the declaration. Applicant need only re- file the
application as a continued prosecution application naming the correct
inventorship of Jones and Smith in the new application’s transmittal letter.
(D) A continuation application was filed under 37 CFR 1.53(b) using a copy
of an executed declaration from the prior application for which a
continuation was filed to correct the inventorship. The continuation
application papers were accompanied by a request by a registered
practitioner, in the continuation application transmittal paper, that Smith,
named as an inventor in the prior application, be deleted as an inventor in
the continuation application.
(E) (A) and (D).
24. 10.02.a.50. If a reissue application is filed within two years of the original patent grant, the applicant may subsequently broaden the claims during prosecution of the pending reissue prosecution beyond the two year limit, ________________________________.
(A) if the applicant indicates in the oath accompanying the reissue application that the claims will be broadened.
(B) if an intent to broaden is indicated in the reissue application at any time within three years from the patent grant.
(C) if the reissue application is filed on the 2-year anniversary date from the patent grant, even though an intent to broaden the claims was not indicated in the application at that time.
(D) if the reissue application is a continuing reissue application of a parent reissue application, and neither reissue application contained an indication of an intent to broaden the claims until 4 years after the patent grant..
(E) provided, absent any prior indication of intent to broaden, an attempt is made to convert the reissue into a broadening reissue concurrent with the presentation of broadening claims beyond the two year limit.
25. 10.02.p.47. A registered practitioner’s client, Apex Mfg. Corporation, bought the entire assets of Pinnacle Mfg. Corporation. Pinnacle gave Apex a list of its patent applications but did not maintain records of the patent assignments. Apex wishes to know which of the assignment documents, if any, of the pending patent applications in Pinnacle’s patent portfolio were never recorded. In accordance with the MPEP, which of the following actions could the practitioner rely upon to most expeditiously answer this question?
(A) Request certified copies of the patent applications as filed.
(B) Request certified copies of the assignment documents of record of the patent applications.
(C) Request certified copies of the patent applications as filed accompanied by the fees set forth in 37 CFR 1.19(b)(1)(i).
(D) Request certified copies of the patent applications as filed accompanied by the fees set forth in 37 CFR 1.19(b)(1)(ii).
(E) Request certified copies of the assignment documents of record of the patent applications accompanied by the fees set forth in 37 CFR 1.19(b)(5).
26. 4.03.a.49. An examiner has advanced a reasonable basis for questioning the adequacy of the enabling disclosure in the specification of your client’s patent application, and has properly rejected all the claims in the application. The claims in the application are drawn to a computer program system. In accordance with the USPTO rules and the procedures set forth in the MPEP, the rejection should be overcome by submitting _____________
(A) factual evidence directed to the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone.
(B) arguments by you (counsel) alone, inasmuch as they can take the place of evidence in the record.
(C) an affidavit under 37 CFR 1.132 by an affiant, who is more than a routineer in the art, submitting few facts to support his conclusions on the ultimate legal question of sufficiency, i.e., that the system “could be constructed.”
(D) opinion evidence directed to the ultimate legal issue of enablement.
(E) patents to show the state of the art for purposes of enablement where these patents have an issue date later than the effective filing date of the application under consideration.
27. 4.03.p.48. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements regarding a proper prior art reference is true?
(A) Canceled matter in the application file of a U.S. patent is a prior art reference as of the filing date under 35 USC 102(e).
(B) Where a patent refers to and relies on the disclosure of a copending subsequently abandoned application, such disclosure is not available as a reference.
(C) Where the reference patent claims the benefit of an earlier filed, copending but subsequently abandoned application which discloses subject matter in common with the patent, and the abandoned application has an enabling disclosure for the common subject matter and the claimed matter in the reference patent, the effective date of the reference patent as to the common subject matter is the filing date of the reference patent.
(D) Matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date.
(E) All foreign patents are available as prior art as of the date they are translated into English.
28. 10.03.a.50. Ben hires a registered practitioner to prosecute his patent application. The practitioner drafted an application having fifteen claims. Claim 1 is independent, and each of claims 2-15 are singularly dependent upon claim 1. A proper non-final Office action is mailed to the practitioner. Following consultation with Ben, the practitioner timely prepared, signed, and filed a reply to the Office action containing an amendment that does not add new matter, but does add claims 16-27. Each of claims 16-27 is directed to the same invention sought to be patented through claims 1-15. The dependency of each of claims 16-27 reads “any of claims 5-15.” For purposes of fee calculation in accordance with the patent laws, rules and procedures as related in the MPEP, how many total claims are contained in the application after the amendment is entered?
(A) One hundred thirty-six.
(B) One hundred thirty-five.
(C) Twenty-seven.
(D) One hundred forty-seven.
(E) Fifteen.
29. 10.03.p.50.. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following facts are required for 35 USC 102(g) to form the basis for an ex parte rejection:
(1) The subject matter at issue has been actually reduced to practice by another before the applicant’s invention.
(2) There has been no abandonment, suppression or concealment.
(3) A U.S. patent application for the subject matter at issue has been filed by another prior to the filing of the applicant’s application.
(4) A U.S. patent has been granted for the subject matter at issue prior to the filing of the applicant’s application.
(A) Fact (1) only
(B) Fact (2) only
(C) Facts (1) and (2)
(D) Facts (1), (2) and (3)
(E) Facts (1), (2), (3) and (4)
30. 4.00.a.9. A non-final Office action contains, among other things, a restriction requirement between
two groups of claims, (Group 1 and Group 2). Which of the following, if included in a timely
reply under 37 C.F.R. § 1.111, preserves applicant’s right to petition the Commissioner to review
the restriction requirement?
I. Applicant’s entire reply to the restriction requirement is: “The examiner erred in
distinguishing between Group 1 and Group 2, and therefore the restriction
requirement is respectfully traversed and no election is being made, in order that
applicant’s right to petition the Commissioner to review the restriction
requirement is preserved.”
II. Applicant’s entire reply to the restriction requirement is: “Applicant elects
Group 1 and respectfully traverses the restriction requirement, because the
examiner erred in requiring a restriction between Group 1 and Group 2.”
III. Applicant’s reply distinctly points out detailed reasons why applicant believes the
examiner erred in requiring a restriction between Group 1 and Group 2, and
additionally sets forth, “Applicant therefore respectfully traverses the restriction
requirement and no election is being made, in order that applicant’s right to
petition the Commissioner to review the restriction requirement is preserved.”
IV. Applicant’s reply distinctly points out detailed reasons why applicant believes the
examiner erred in requiring a restriction between Group 1 and Group 2, and
additionally sets forth, “Applicant therefore respectfully traverses the restriction
requirement and elects Group 2.
(A) I.
(B) II.
(C) III.
(D) IV.
(E) None of the above.
31. 4.00.p.21. Mr. Roberts, an American citizen touring a vineyard, saw a unique grape-squeezing machine in France. The machine was highly efficient, and produced excellent wine. The vineyard owner was not hiding the machine. It was out of public view and was the only one of its kind. The vineyard owner had built it himself several years earlier, and no drawing or
technical description of the machine was ever made. The vineyard made only local sales of its
wines. Using his photographic memory, Roberts went back to his hotel and made technical
drawings of what he had seen. Upon his return to the United States, Roberts promptly prepared
and filed a patent application directed to the machine. Which of the following statements is
correct?
(A) Roberts may not obtain a patent on the machine because it was known by others
before Mr. Roberts made technical drawings of the machine.
(B) Roberts may not obtain a patent on the machine because wine made by the
machine had been sold more than a year before Roberts’ application filing date.
(C) Roberts is entitled to a patent because a goal of the patent system is public
disclosure of technical advances, and the machine would not have been disclosed
to the public without Roberts’ efforts.
(D) Roberts may not obtain a patent on the machine because the vineyard owner was
not hiding the machine and therefore the machine was in public use more than a
year before Roberts’ application filing date.
(E) Statements (A), (B), (C) and (D) are each incorrect.
32. 10.01.a.6. In connection with the utility of an invention described in a patent application, which of the following conforms to proper USPTO practice and procedure?
(A) A deficiency under 35 U.S.C. § 101 also creates a deficiency under 35 U.S.C.
§ 112, first paragraph.
(B) To overcome a rejection under 35 U.S.C. § 101, it must be shown that the claimed
device is capable of achieving a useful result on all occasions and under all
conditions.
(C) A claimed invention is properly rejected under 35 U.S.C. § 101 as lacking utility
if the particular embodiment disclosed in the patent lacks perfection or performs
crudely.
(D) To overcome a rejection under 35 U.S.C. § 101, it is essential to show that the
claimed invention accomplishes all its intended functions.
(E) A claimed invention lacks utility if it is not commercially successful.
33. 10.01.p.3. Practitioner Smith filed a utility patent application on January 5, 2001, with informal drawings. Upon review of the drawings, the USPTO concluded that the drawings were not in compliance with the 37 CFR 1.84(a)(1) and (k), and were not suitable for reproduction. In an Office communication, Smith was notified of the objection and given two months to correct the drawings so that the application can be forwarded to a Technology Center for examination.
Which of the following complies with USPTO practices and procedures for a complete bona fide
attempt to advance the application to final action?
(A) Smith timely files a response requesting that the objections to the drawings be
held in abeyance until allowable subject matter is indicated.
(B) Smith timely files a response requesting that the objections to the drawings be
held in abeyance since the requirement increases up- front costs for the patent
applicant, and the costs can be avoided if patentable subject matter is not found.
(C) Smith timely files a response requesting that the objections to the drawings be
held in abeyance until fourteen months from the earliest claimed priority date.
(D) Smith timely files a response correcting the drawings to comply with 37
CFR 1.84(a)(1) and (k), and making them suitable for reproduction.
(E) All of the above.
34. 4.02.a.16. Jill, a registered patent agent, receives a Notice of Allowance from the USPTO
with a mail date of November 13, 2001, regarding a utility patent application for an
improved garden hose which she had filed on behalf of one of her small entity clients.
The Notice of Allowance specifies a sum that must be paid within three months of the
mailing date to avoid abandonment. The sum specified includes both the issue fee and
the publication fee. As a result of a small fire in her office building, Jill is unable to
resurrect her files until the last day of the three month period. Jill mails a letter to the
USPTO on February 13, 2002 using the U.S. Postal Service. Jill does not employ the
procedures of 37 CFR 1.8 or 1.10 to mail the letter. The letter is received in the USPTO
on February 15, 2002. The letter correctly identifies the application. The letter
authorizes the USPTO to charge the proper issue fee for a small entity to her deposit
account. The account has been identified in a previously filed authorization to charge
fees. At the time the letter was filed in the USPTO, the account had a balance of
$1000.00 in funds. Nothing in the letter authorized payment of the publication fee, no
petition for an extension of time was filed, and an Office-provided issue fee transmittal
form was not filed. No postal emergency was involved in filing the letter. Which of the
following statements accords with proper USPTO practice and procedure?
(A) The application will become abandoned because Jill did not authorize
payment of the publication fee.
(B) The application will not become abandoned because the authorization to
charge fees operates as a request to charge the correct fees to any deposit
account identified in a previously filed authorization to charge fees.
(C) The application will become abandoned because Jill’s letter did not
include a petition for an extension of time accompanied by the proper fee.
(D) The application will become abandoned because a completed Officeprovided
issue fee transmittal form, PTOL-85B, did not accompany Jill’s
letter.
(E) The application will become abandoned because Jill’s letter was not
timely filed in the USPTO and it was not mailed in accordance with the
provisions of 37 CFR 1.8 or 1.10.
35. 4.02.p.4. Assume that conception of applicant’s complex invention occurred prior to the
date of the reference, but reduction to practice occurred after the date of the reference.
Which of the following is sufficient to overcome the reference in accordance with proper
USPTO practice and procedure?
(A) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to allege that
applicant or patent owner has been diligent.
(B) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to clearly
establish conception of the invention prior to the effective date of the
reference, and diligence from just prior to the effective date of the
reference to actual reduction to practice. The presence of a lapse of time
between the reduction to practice of an invention and the filing of an
application thereon is not relevant.
(C) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to clearly
establish conception of the invention prior to the effective date of the
reference. Diligence need not be considered.
(D) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to show
conception and reduction to practice in any country.
(E) In a 37 CFR 1.131 affidavit or declaration, it is always sufficient to prove
actual reduction to practice for all mechanical inventions by showing plans
for the construction of the claimed apparatus.
36. 10.02.a.2. To satisfy the written description requirement of the first paragraph of 35 USC 112, an applicant must show possession of the invention. An applicant’s lack of possession of the invention may be evidenced by:
(A) Describing an actual reduction to practice of the claimed invention.
(B) Describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention.
(C) Requiring an essential feature in the original claims, where the feature is not described in the specification or the claims, and is not conventional in the art or known to one of ordinary skill in the art.
(D) Amending a claim to add a limitation that is supported in the specification through implicit or inherent disclosure.
(E) Amending a claim to correct an obvious error by the appropriate correction.
37. 10.02.p.5. In accordance with the MPEP and USPTO rules and procedure, certain individuals owe a duty to the USPTO to disclose all information known to be material to patentability of the claim(s) pending in an application. Which of the following parties does not have the duty?
(A) An inventor named in the application who relies on a patent attorney to prepare and prosecute the application.
(B) A corporation to which an assignment of the entire interest in the application is on record at the USPTO.
(C) An agent who prepares the application.
(D) An attorney who prosecutes the application.
(E) A person, who is not an inventor named in the application, who is substantively involved in the preparation and prosecution of the application, and who is associated with an inventor named in the application.
38. 4.03.a.2. A registered practitioner filed in the USPTO a client’s utility patent application on December 30, 2002. The application was filed with a request for nonpublication, certifying that the invention disclosed in the U.S. application has not and will not be the subject of an application in another country, or under a multilateral international agreement, that requires eighteen month publication. Subsequently, the client files an application in Japan on the invention and some recent improvements to the invention. The improvements are not disclosed or supported in the utility application. Japan is a country that requires eighteen month publication. Two months after filing the application in Japan, and before filing any other papers in the USPTO, the client remembers that a nonpublication request was filed and informs the practitioner about the application that was filed in Japan. Which of the following courses of action is in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) The application is abandoned because the practitioner did not rescind the nonpublication request and provide notice of foreign filing within 45 days of having filed the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(B) The application is abandoned because the applicant did not rescind the nonpublication request before filing the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(C) The applicant should file an amendment to the specification of the U.S. application, adding the recent improvements to the disclosure in the specification.
(D) The application is abandoned because the applicant did not rescind the nonpublication request by notifying the Office under 37 CFR 1.213(c) within the appropriate time. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(E) The applicant could today notify the USPTO of the foreign filing. It is not necessary to file a petition and fee to revive for the application to continue to be examined in the USPTO.
39. 4.03.p.4. The Office mailed an Office action containing a proper final rejection dated July 8, 2002. The Office action did not set a period for reply. On January 7, 2003, in reply to the final rejection, a registered practitioner filed a request for continued examination under 37 CFR 1.114, a request for a suspension of action under 37 CFR 1.103(c) to suspend action for three months, and proper payment all required fees. No submission in reply to the outstanding Office action accompanied the request for continued examination. No other paper was submitted and no communication with the Office was held until after Midnight, January 8, 2003. Which of the following statements accords with the USPTO rules and the procedures set forth in the MPEP?
(A) If an appropriate reply is submitted within the three month period of suspension permitted under 37 CFR 1.103(c), the application will not be held abandoned.
(B) The application will not be held abandoned if an appropriate reply is submitted within the three month period of suspension and it is accompanied by a showing that the reply could not have been submitted within the period set in the final rejection. For example, the reply includes a showing based on an experiment that required 8 months to conduct.
(C) No reply will prevent the application from being held abandoned.
(D) If, on January 10, 2003, the primary examiner and applicant agree to an examiner’s amendment that places the application in condition for allowance and a notice of allowance is mailed within the three month period of suspension, application X will not be held abandoned.
(E) No other submission by applicant is necessary because application X is still pending. The examiner is required to act on the request for continued examination after expiration of the three month period of suspension.
40. 10.03.a.4. Claim 1 of an application recites “[a]n article comprising: (a) a copper substrate; and (b) a electrically insulating layer on said substrate.” The specification defines the term “copper” as being elemental copper or copper alloys. In accordance with the patent laws, rules and procedures as related in the MPEP, for purposes of searching and examining the claim, the examiner should interpret the term “copper” in the claim as reading on:
(A) Elemental copper only, based on the plain meaning of “copper.”
(B) Copper alloys only, based on the special definition in the specification.
(C) Elemental copper and copper alloys, based on the special definition in the specification.
(D) Any material that contains copper, including copper compounds.
(E) None of the above.
41. 10.03.p.2. A U.S. patent was granted on May 8, 2001. The sole independent claim in the patent is directed to a combination of elements ABCD. A registered practitioner filed a reissue application on April 11, 2003 to narrow sole independent claim. In the reissue application, the independent claim is amended to a combination to elements ABCDE. The reissue application is accompanied by a transmittal letter stating that the application was filed to narrow a claim, that all inventors could not be located to sign the reissue oath or declaration at that time, and that a declaration would be submitted in due course. No other amendments to the claims were filed on April 11, 2003. On May 8, 2003, a declaration signed by all inventors is filed declaring that they had claimed less than they had a right to claim, and that the error arose without deceptive intent. The inventors also filed on May 8, 2003 a preliminary amendment deleting element A from the sole independent claim leaving elements BCDE. The amendment and declaration are filed using the provisions of 37 CFR 1.10. The practitioner included an authorization to charge the practitioner’s deposit account for any necessary fees. Which of the following actions by the primary the examiner in the first Office action is in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) Reject all the claims based upon a broadening reissue outside the two year statutory period authorized by 35 USC 251 since applicant did not file a broadened reissue claim at the time of filing.
(B) Reject all the claims based upon a broadening reissue outside the two year statutory period authorized by 35 USC 251 since applicant did not file a claim to a broadened reissue claim within the two year period set by 35 USC 251.
(C) Reject all the claims based upon a broadening reissue outside the two year statutory period authorized by 35 USC 251 since applicant’s indication in the transmittal letter indicated that the filing of the reissue application was a narrowing reissue and that the broadening amendment was not permissible even if filed within the two-years from the grant of the original patent.
(D) Determine that the application is a proper broadening reissue and perform an examination and issue an Office action in due course.
(E) Determine that the application is a proper broadening reissue and reject the claims under the recapture doctrine since the claims are broader than the issued claims.
42. 4.02.a.42. Which of the following can never properly be available as prior art for purposes of a rejection under 35 U.S.C. § 102(a)?
(A) A drawing, labeled “Prior Art,” submitted by the applicant.
(B) Canceled matter in an application that matured into a U.S. patent where the matter is not published in the patent.
(C) An abandoned patent application referenced in a publication available to the public.
(D) The combination of two references, where one of the references is used merely to explain the meaning of a term used in the primary reference.
(E) A reference authored only by applicant, and published less than one year prior to the effective filing date of applicant’s patent application.
43. 4.00.p.41. Which of the following may not be properly used as prior art for purposes of rejecting a claim under 35 U.S.C. § 102(b) in an application having an effective filing date of Monday, May 3, 1999?
(A) A journal article, published Saturday, May 2, 1998, disclosing all the claimed
elements and fully teaching how to make and use the invention as claimed.
(B) A foreign patent, published March 3, 1998, which applicant referenced in the
application when claiming foreign priority based on the foreign application date,
and applicant submitted a certified copy of the original foreign application.
(C) Applicant’s statement in a declaration under 37 C.F.R. § 1.132 that although the
invention as claimed had been offered for sale in department stores in New York
during 1997, this was done only to analyze consumer acceptance of the packaging
in which the invention is marketed.
(D) A journal article, published May 1, 1997, disclosing all the elements of the claim
and teaching how to make and use the claimed invention. The examiner used the
article in combination with another journal article in a previous non-final Office
action to reject the same claim under 35 U.S.C. § 103.
(E) All of the above.
44. 10.01.a.26. Where a reference relied upon in a 35 U.S.C. § 103 rejection qualifies as prior art only under 35 U.S.C. § 102(f), or (g), which of the following represents the most comprehensive answer in accord with proper USPTO practice and procedure as to the action an applicant should take to overcome the rejection?
(A) Present proof that the subject matter relied upon and the claimed invention are
currently commonly owned.
(B) Present proof that the subject matter relied upon and the claimed invention were
commonly owned at the time the later invention was made.
(C) Present proof that the subject matter relied upon and the claimed invention were
subject to an obligation to assign to the same person at the time the later invention
was made.
(D) (A) and (B).
(E) (C) and (D).
45. 4.02.a.44. An amendment filed in January 8, 2002, in an unassigned nonprovisional
application seeks to cancel claims so that fewer than all of the currently named inventors
are the actual inventors of the invention being claimed. The amendment includes a
request to delete the names of the persons who are not inventors. In accordance with
proper USPTO rules and procedure, the request may be signed by which of the
following?
(A) A registered practitioner not of record who acts in a representative
capacity under 37 CFR 1.34(a).
(B) All of the applicants (37 CFR 1.41(b)) for patent.
(C) A registered practitioner of record appointed pursuant to 37 CFR 1.34(b).
(D) (B) and (C).
(E) (A), (B), and (C).
46. 4.02.p.37. Applicant Einstein files a patent application on November 26, 1999, that claims a new type of football pads. Prosecution is conducted and the application issues as a patent to Einstein on April 3, 2001. A competitor, Weisman, who has been making and selling football pads since April of 1998, learns of Einstein’s patent when Einstein approaches him on May 3, 2001, with charges of infringement of the Einstein patent. Weisman makes an appointment to see you to find out what he can do about Einstein’s patent, since Weisman believes that he is the first inventor of the claimed subject matter. At your consultation on May 17, 2001, with Weisman, you discover that Weisman widely distributed printed publications containing a fully enabling disclosure of the invention and all claimed elements in the Einstein patent. Weisman used the printed publication for marketing his football pads in April of 1998. Weisman explains that he wishes to avoid litigation. Which of the following is a proper USTPO practice and procedure that is available to Weisman?
(A) Weisman should file a petition to correct inventorship under 37 CFR 1.324 in the patent, along with a statement by Weisman that such error arose without any deceptive intention on his part, requesting that a certificate of correction be issued for the patent under 35 U.S.C. § 256, naming the correct inventive entity, Weisman.
(B) Weisman should file a reissue application under 35 U.S.C. § 251, requesting correction of inventorship as an error in the patent that arose or occurred without deceptive intention, wherein such error is corrected by adding the inventor Weisman and deleting the inventor Einstein, as well as citing Joe Weisman’s April 1998 printed publication for the football pads as evidence that Weisman is the correct inventor.
(C) Weisman should file a prior art citation under 35 U.S.C. § 301, citing the sales in April 1998 of football pads, and explain the pertinency and manner of applying such sales to at least one claim of the Einstein patent.
(D) Weisman should file a request for ex parte reexamination of the Einstein patent under 35 U.S.C. § 302, citing the April 1998 printed publication of football pads in, and explain the pertinency and manner of applying such prior art to at least one claim of the Einstein patent.
(E) Weisman should file a request for inter partes reexamination of the Einstein patent under 35 U.S.C. § 311, citing public use of the football pads in April 1998, and explain the pertinency and manner of applying such prior use to at least one claim of the Einstein patent.
47. 10.02.a.49. In accordance with the MPEP and USPTO rules and procedure, correspondence transmitted to the USPTO by facsimile is not permitted in certain situations. Which of the following facsimile transmissions to the USPTO will be accorded a date of receipt by the USPTO?
(A) Facsimile transmission of a request for reexamination under 37 CFR 1.510 or 1.913.
(B) Facsimile transmission of drawings submitted under 37 CFR 1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, or 1.437.
(C) Facsimile transmission of a response to a Notice of Incomplete Nonprovisional Application for the purpose of obtaining an application filing date.
(D) Facsimile transmission of a correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 through 5.5 and directly related to the secrecy order content of the application.
(E) Facsimile transmission of a continued prosecution application under 37 CFR 1.53(d) and an authorization to charge the basic filing fee to a deposit account.
48. 10.02.p.46. Which of the following statements does not accord with proper USPTO practice and procedure?
(A) A protest may be filed by an attorney or other representative on behalf of an unnamed principal.
(B) Information which may be relied on in a protest includes information indicating violation of the duty of disclosure under 37 CFR 1.56.
(C) While a protest must be complete and contain a copy of every document relied on by the protestor, a protest without copies of prior art documents will not necessarily be ignored.
(D) A protest must be submitted prior to the date the application was published or the mailing of a notice of allowance, whichever occurs later, provided the application is pending.
(E) Since a protestor is not authorized to participate in the prosecution of a pending application, the examiner must not communicate in any manner with the protestor.
49. 4.03.a.47. In accordance with USPTO rules and the procedures set forth in the MPEP, claims in a patent application may not contain:
(A) chemical formulas.
(B) mathematical equations.
(C) drawings or flow diagrams.
(D) only one sentence.
(E) tables not necessary to conform with 35 USC 112.
50. 4.03.p.46. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a “printed publication” under 35 USC 102(b), with respect to a patent application filed June 1, 2002?
(A) A paper that was orally presented at a meeting held May 1, 2001, where the meeting was open to all interested persons and the paper was distributed in written form to six people without restriction.
(B) A doctoral thesis that was indexed, cataloged, and shelved May 1, 2001, in a single, university library.
(C) A research report distributed May 1, 2001, in numerous copies but only internally within an organization and intended to remain confidential.
(D) A reference available only in electronic form on the Internet, which states that it was publicly posted May 1, 2001.
(E) A technical manual that was shelved and cataloged in a public library as of May 1, 2001, where there is no evidence that anyone ever actually looked at the manual.
1.C 26.A
2.B 27.D
3.C 28.D
4.C 29.C
5.D 30.D
6.All Ans Accepted 31.E
7.B 32.A
8.B 33.D
9.B 34.E
10.E 35.B
11.C 36.C
12.D 37.B
13.C 38.A
14.B 39.C
15.B 40.C
16.A 41.D
17.B 42.E
18.A 43.A
19.A 44.B or C
20.C 45.E
21.E 46.D
22.A 47.E
23.E 48.D
24.A 49.C
25.E 50.C
P1. 10.03.a.49. Inventor files an application for a non-theoretical metal alloy. The application as originally filed contains the following Claim 1:
1. A metal alloy comprising at least 20% by volume of iron; at least 10% by volume of gallium, and at least 10% by volume of copper.
In accordance with the patent law, rules and procedures as related by the MPEP, which of the following claims would be properly held indefinite under 35 USC 112(2)?
(A) Claim 2: The alloy of claim 1 containing 66% by volume of gallium and 14% by volume of copper.
(B) Claim 2: The alloy of claim 1 containing at least 21% by volume of iron, 11% by volume of gallium, and 10.01% by volume of copper.
(C) Claim 2: The alloy of claim 1 containing 20% by volume of iron, 10% by volume of gallium, and 10% by volume of copper.
(D) Claim 2: The alloy of claim 1 containing 54% by volume of copper and 27% by volume of gallium.
(E) Claim 2: The alloy of claim 1 containing at least 1% by volume of silver.
P2. 10.03.p.47. To rely in a rejection under 35 USC 102(a) on an invention that is known or publicly used in accordance with patent laws, rules and procedures as rel
Looks like it only let me post the first practice test. Let me try to post the other 3 one at a time:
2nd test:
P1. 10.03.a.49. Inventor files an application for a non-theoretical metal alloy. The application as originally filed contains the following Claim 1:
1. A metal alloy comprising at least 20% by volume of iron; at least 10% by volume of gallium, and at least 10% by volume of copper.
In accordance with the patent law, rules and procedures as related by the MPEP, which of the following claims would be properly held indefinite under 35 USC 112(2)?
(A) Claim 2: The alloy of claim 1 containing 66% by volume of gallium and 14% by volume of copper.
(B) Claim 2: The alloy of claim 1 containing at least 21% by volume of iron, 11% by volume of gallium, and 10.01% by volume of copper.
(C) Claim 2: The alloy of claim 1 containing 20% by volume of iron, 10% by volume of gallium, and 10% by volume of copper.
(D) Claim 2: The alloy of claim 1 containing 54% by volume of copper and 27% by volume of gallium.
(E) Claim 2: The alloy of claim 1 containing at least 1% by volume of silver.
P2. 10.03.p.47. To rely in a rejection under 35 USC 102(a) on an invention that is known or publicly used in accordance with patent laws, rules and procedures as related in the MPEP, the invention:
(A) must be known or used in NAFTA or WTO member countries.
(B) must be known or used in a NAFTA member country, but only if the filing date of the application is after the effective date of the North American Free Trade Agreement Implementation Act.
(C) must be known or used in this country.
(D) can be known or used in any country.
(E) must be known or used in a WTO member country, but only if the filing date of the application is after the effective date of the implementation of the Uruguay Round (WTO) Agreements Act.
The following fact pattern is for the next 2 questions:
Mario Lepieux was a member of a Canadian national hockey team touring Europe. While traveling through Germany (a WTO member country) in December 1998, Mario conceived of an aerodynamic design for a hockey helmet that offered players improved protection while reducing air resistance during skating. Upon Mario’s return to Canada (a NAFTA country), he enlisted his brothers Luigi and Pepe Lepieux to help him market the product under the tradename “Wing Cap.” On February 1, 1999, without Mario’s knowledge or permission, Luigi anonymously published a promotional article written by Mario and fully disclosing how the Wing Cap was made and used. The promotional article was published in Moose Jaw Monthly, a regional Canadian magazine that is not distributed in the United States. The Wing Cap was first reduced to practice on March 17, 1999. A United States patent application properly naming Mario as the sole inventor was filed September 17, 1999. That application has now been rejected as being anticipated by the Moose Jaw Monthly article.
P3. 4.00.a.10. Which of the following statements is most correct?
(A) The promotional article cannot be used as prior art because the Wing Cap had not been reduced to practice at the time the article appeared in the regional Canadian magazine.
(B) The regional Canadian magazine article is not prima facie prior art because it was published without Mario’s knowledge or permission.
(C) The regional Canadian magazine article is not prima facie prior art because it appeared in a regional Canadian publication and does not evidence knowledge or use in the United States.
(D) The promotional article in the regional Canadian magazine constituted an offer to sell that operates as an absolute bar against Mario’s patent application.
(E) Mario, as the inventor, can overcome the rejection by filing an affidavit under 37 C.F.R. § 1.132 establishing that he is the inventor, and the article describes his work.
P4. 4.00.a.11. Which of the following statements is most correct?
(A) In a priority contest against another inventor, Mario can rely on his activities in Canada in establishing a date of invention.
(B) In a priority contest against another inventor, Mario can rely on his activities in Germany in establishing a date of invention.
(C) Mario can rely on his activities in Canada in establishing a date of invention prior to publication of the regional Canadian magazine article.
(D) (A) and (C).
(E) (A), (B), and (C).
P5. 4.00.p.28. Which of the following is true?
(A) On appeal of a rejection of ten claims to the Board of Patent Appeals and
Interferences, each appealed claim stands or falls separately as a result of
appellant pointing out differences in what the claims cover.
(B) The 2-month period for filing a petition mentioned in 37 CFR 1.181(f) is
extendable under 37 CFR 1.136(a).
(C) An examiner may enter a new ground of rejection in the examiner’s answer to an
applicant’s appeal brief.
(D) After filing a notice of appeal, an applicant is estopped from further prosecuting
the same claims in a continuation application.
(E) When desiring to claim foreign priority, the oath or declaration in a reissue
application must claim foreign priority even though the priority claim was made
in the original patent.
P6. 10.01.a.11. In which of the following final Office action rejections is the finality of the Office action rejection proper?
(A) The final Office action rejection is in a second Office action and uses newly cited
art under 35 U.S.C. § 102(b) to reject unamended claims that were objected to but
not rejected in a first Office action.
(B) The final Office action rejection is in a first Office action in a continuation- in-part
application where at least one claim includes subject matter not present in the
parent application.
(C) The final Office action rejection is in a first Office action in a continuing
application, all claims are drawn to the same inve ntion claimed in the parent
application, and the claims would have been properly finally rejected on the
grounds and art of record in the next Office action if they had been entered in the
parent application.
(D) The final Office action rejection is in a first Office action in a substitute
application that contains material that was presented after final rejection in an
earlier application but was denied entry because the issue of new matter was
raised.
(E) None of the above.
P7. 4.02.a.24. Mr. Brick, the inventor, files an application with the USPTO on January 2, 2001 containing a single claim for his invention: a new bouncing ball called “Y”. Brick
receives a first Office action dated June 4, 2001 from the primary examiner handling
Brick’s application. The examiner rejected Brick’s claim only under 35 U.S.C. § 103 on
the grounds that Reference X teaches a bounc ing ball called “Q,” and that although “Y”
and “Q” are not the same, it would have been obvious to one of ordinary skill to make
changes to the “Q” ball in order to obtain a ball just like Brick’s “Y” ball.
On August 2, 2001, Brick responds by stating that his new “Y” ball bounces
unexpectedly higher than the “Q” ball described in Reference X. Brick includes a
declaration, signed by Mrs. Kane, that includes extensive data comparing the bouncing
results for the “Y” and “Q” balls and showing that the “Y” ball bounces unexpectedly
higher than the “Q” ball. Brick argues that the rejection under 35 U.S.C. § 103 should be
withdrawn because he has proven that, in view of the unexpectedly higher bounce of the
“Y” ball as compared to the “Q” ball, it would not have been obvious to one of ordinary
skill in the art to make changes to the “Q” ball to obtain Brick’s “Y” ball.
On October 2, 2001, Brick receives a final rejection from the examiner. The rejection
states, in its entirety: “The response has been reviewed but has not been found persuasive
as to error in the rejection. The claim is finally rejected under 35 U.S.C. § 103 for the
reasons given in the first Office action.” Brick believes he is entitled to a patent to his
new bouncing ball “Y.” How should Brick proceed?
(A) Brick should give up because the declaration did not persuade the
examiner of the merits of Brick’s invention.
(B) Brick should timely file a Request for Reconsideration asking the
examiner to reconsider the rejection on the basis of the Kane declaration
and, as a precaution against the Request for Reconsideration being
unsuccessful, also timely file a Notice of Appeal.
(C) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does no t provide an enabling
disclosure for a new ball with the unexpectedly higher bounce of his “Y”
ball.
(D) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does not provide a written
description for a new ball with the unexpectedly higher bounce of his “Y”
ball.
(E) Brick should respond by submitting a request for reconsideration
presenting an argument the declaration data proves that the “Q” ball and
the “Y” are not identical.
P8. 4.02.p.11. While vacationing in Mexico on April 14, 2001, Henrietta invented a camera that operated at high temperature and is waterproof. She carefully documented her invention
and filed a provisional application in the USPTO on April 30, 2001. She conducted tests
in which the camera withstood temperatures of up to 350 degrees Fahrenheit. However,
when the camera was placed in the water leaks were discovered rendering the camera
inoperable. On April 12, 2002, Henrietta conceived of means that she rightfully believed
will fix the leakage issue. Henrietta came to you and asked whether she can file another
application. Henrietta desires to obtain the broadest patent protection available to her.
Which of the following is the best manner in accordance with proper USPTO practice
and procedure for obtaining the patent covering both aspects of her invention?
(A) She can file a nonprovisional application on April 30, 2002 claiming
benefit of the filing date of the provisional application, disclosing the
means for fixing the leak and presenting a claim covering a camera that
operates at high temperatures and a claim covering a camera that is
waterproof, or presenting a claim covering a camera that both operates at
high temperatures and is waterproof.
(B) Henrietta cannot rightfully claim a camera that is waterproof in a
nonprovisional application filed on April 30, 2002, since she tested the
camera and the camera developed leaks.
(C) Henrietta can file another provisional application on April 30, 2002 and
obtain benefit of the filing of the provisional application filed on April 30,
2001.
(D) Henrietta may establish a date of April 14, 2001 for a reduction to practice
of her invention for claims directed to the waterproofing feature.
(E) Henrietta should file a nonprovisional application on April 30, 2002
having claims directed only to a camera that withstands high temperatures
since the camera that she tested developed leaks.
P9. 10.02.a.6. According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131?
(A) A rejection properly based on statutory double patenting.
(B) A rejection properly made under 35 USC 102(d) based on a foreign patent granted in a non-WTO country.
(C) A rejection properly made under 35 USC 102(a) based on a journal article dated one month prior to the effective filing date of the U.S. patent application. Applicant has clearly admitted on the record during the prosecution of the application that subject matter in the journal article relied on by the examiner is prior art.
(D) A rejection properly made under 35 USC 102(b) based on a U.S. patent that issued 18 months before the effective filing date of the application. The patent discloses, but does not claim, the invention.
(E) None of the above.
P10. 10.02.p.8. An application includes independent claims 1 and 2. Which of the following, in a reply to a non-final Office action, provides the proper basis for a rejection under 35 USC 112, first paragraph?
(A) Applicant amends claim 2 of the originally filed application by adding a limitation which was previously written only in claim 1 of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.
(B) Applicant amends claim 1 of the originally filed application by adding a limitation that was written in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1.
(C) Applicant amends and broadens claim 2 by removing a limitation which was written in the original disclosure of the application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.
(D) Applicant adds new matter to the disclosure, but does not amend the claims of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as described in each of the claims.
(E) None of the above.
P11. 4.03.a.5. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following may not be filed by facsimile transmission?
(A) A request for continued examination under 37 CFR 1.114 along with a submission.
(B) A continued prosecution application under 37 CFR 1.53(d).
(C) An amendment in reply to a non-final Office action.
(D) The filing of a provisional patent application specification and drawing for the purpose of obtaining an application filing date.
(E) (B) and (D).
P12. 4.03.p.5. Which of the following practices or procedures may be properly employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(a)?
(A) Perfecting a claim to priority under 35 USC 119(a)-(d) based on a foreign application having a foreign priority filing date that antedates the reference.
(B) Filing a declaration under 37 CFR 1.131 showing that the cited prior art antedates the invention.
(C) Filing a declaration under 37 CFR 1.132 showing that the reference invention is by “others.”
(D) Perfecting priority under 35 USC 119(e) or 120 by, in part, amending the declaration of the application to contain a specific reference to a prior application having a filing date prior to the reference.
(E) (A), (B) (C), and (D).
P13. 10.03.a.5. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following does not constitute prior art upon which a primary examiner could properly rely upon in making an obviousness rejection under 35 USC 103?
(A) A U.S. patent in the applicant’s field of endeavor which was issued two years before the filing date of applicant’s patent application.
(B) A non-patent printed publication in a field unrelated to the applicant’s field of endeavor but relevant to the particular problem with which the inventor-applicant was concerned, which was published the day after the filing date of applicant’s application.
(C) A printed publication published more than 1 year before the filing date of applicant’s patent application, which publication comes from a field outside the applicant’s field of endeavor but concerns the same problem with which the applicant-inventor was concerned.
(D) A printed publication in the applicant’s field of endeavor published 3 years before the filing date of applicant’s patent application.
(E) A U.S. patent which issued more than 1 year before the filing date of applicant’s patent application, which the Office placed in a different class than the applicant’s patent application, but which concerns the same problem with which the applicant-inventor was concerned, and which shows the same structure and function as the applicant’s patent application.
P14. 10.03.p.4. A registered practitioner files an international application submission that includes a description, claims and drawings in the United States Receiving Office (RO/US) on Wednesday, January 8, 2003. The submission did not include the required request, international and search fees, or the designation of a PCT contracting State. The RO/US mails an “Invitation to Correct the Purported International Application,” dated January 10, 2003, to the practitioner indicating that the designation of at least one Contracting State, as required by PCT Article 11(1)(iii)(b), was not included. A one-month period for response is set in the Invitation. On Monday, February 10, 2003, the practitioner submits by facsimile a designation sheet of the Request Form designating every available Contracting State, and authorization to charge all required fees. In accordance with the patent laws, rules and procedures as related in the MPEP, will the application be accorded an international filing date?
(A) Yes. The application will be accorded a filing date of January 8, 2003.
(B) Yes. The application will be accorded an international filing date of February 10, 2003.
(C) No. The application will not be accorded an international filing date because the failure to designate at least one contracting State cannot be cured by a facsimile transmission.
(D) No. The application was given a one-month period for response. The practitioner would have had to have filed the response on Friday, February 7, 2003 in order to have been timely.
(E) None of the above.
P15. 4.00.a.36. A petition to make a patent application special may be filed without fee in which of the following cases?
(A) The petition is supported by applicant’s birth certificate showing applicant’s age is 62.
(B) The petition is supported by applicant’s unverified statement that applicant’s age is 65.
(C) The petition is supported by applicant’s statement that there is an infringing device actually on the market, that a rigid comparison of the alleged infringing device with the claims of the application has been made, and that applicant has made a careful and thorough search of the prior art.
(D) The petition is accompanied by a statement under 37 C.F.R. § 1.102 by applicant explaining the relationship of the invention to safety of research in the field of recombinant DNA research.
(E) The petition is accompanied by applicant’s statement explaining how the invention contributes to the diagnosis, treatment or prevention of HIV/AIDS or cancer.
P16. 10.01.a.24. Able and Baker conceived an improved gas grille for cookouts. Using elements A, B, C,D, E and F found in their backyards, as well as elements G, H, I, J, K, L, M and N purchased at a local hardware store, they successfully constructed and used a gas grille conforming to their concept. The grille includes subcombination of elements K, L and M conceived by Able, and subcombination C, D, F, G and M conceived by Baker. Able and Baker conceived their respective subcombinations separately and at different times. Able and Baker retain you to prepare and file a patent application for them. You are considering whether and what can be claimed in one patent application. Which of the following is true?
(A) For Able and Baker to properly execute an oath or declaration under 37 CFR 1.63
in a patent application claiming not only the grille, but also the two
subcombinations, Able and Baker must be joint inventors of the grille, and each
of the two subcombinations.
(B) A characteristic of U.S. patent law that is generally shared by other countries is
that the applicant for a patent must be the inventor.
(C) If Able and Baker execute an oath or declaration under 37 CFR 1.63 as joint
inventors and file an application claiming the grille (a combination of elements A,
B, C, D, E, F, G, H, I, J, K, L, M and N), the existence of the claim to the grille is
evidence of their joint inventorship of the individual elements.
(D) Able and Baker may properly execute an oath or declaration under 37 CFR 1.63
as joint inventors and file an application containing claims to the grille (a
combination of elements A, B, C, D, E, F, G, H, I, J, K, L, M and N), claims to
the subcombination conceived by Able, and claims to the subcombination
conceived by Baker.
(E) Able and Baker could not properly claim the combination unless they successfully
and personally reduced the grille to practice.
P17. 10.00.p.50. Which of the following is not a USPTO recommendation or requirement?
(A) Claims should be arranged in order of scope so that the first claim presented is the least restrictive.
(B) Product and process claims should be separately grouped.
(C) Every application should contain no more than three dependent claims.
(D) A claim which depends from a dependent claim should not be separated from that dependent claim by any claim which does not also depend from the dependent claim.
(E) Each claim should start with a capital letter and end with a period.
P18. 4.02.p.24. In 1995 Patent Agent filed a U.S. patent application containing five claims
(Application 1). All five claims are fully supported under 35 U.S.C. § 112 by the
disclosure of Application 1. In 2000, Patent Agent filed a U.S. patent application
(Application 2) that was a continuation- in-part of Application 1. Application 2 adds new
subject matter to the disclosure of Application 1, and ten additional claims. Of the fifteen
claims in Application 2, claims 1-5 are exactly the same as Application 1, claims 6-10 are
fully supported under 35 U.S.C. § 112 by the disclosure of Application 1, and claims 11-
15 are fully supported under 35 U.S.C. § 112 only by the newly added subject matter of
Application 2. The effective filing date for claims in Application 2 is:
(A) 1-15 is 2000.
(B) 1-15 is 1995.
(C) 1-10 is 1995.
(D) 11-15 is 2000.
(E) (C) and (D).
P19. 10.02.a.46. Which of the following statements relevant to a third party submission in a published patent application accords with proper USPTO practice and procedure?
(A) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application.
(B) A submission of patents by a member of the public must be made prior to the mailing of a Notice of Allowance.
(C) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is later.
(D) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is earlier.
(E) Any submission not filed within the period set forth in the patent rules will be accepted provided it is accompanied by the processing fee set forth in 37 CFR 1.17(i).
P20. 10.02.p.43. A patent application filed in the USPTO claims a nylon rope coated with element E for the purpose of preventing breakage of the rope. In the first Office action, the examiner rejects the claim as obvious over P in view of a trade journal publication, T. P teaches a nylon rope coated with resin for the purpose of making the rope waterproof. T teaches a nylon tent fabric coated with element E for the purpose of making the tent waterproof, and suggests the use of element E for making other nylon products waterproof. Following proper USPTO practices and procedures, the combination of P and T:
(A) cannot support a prima facie case of obviousness because T lacks a suggestion to combine with P for the purpose of preventing breakage in nylon rope.
(B) cannot support a prima facie case of obviousness because P lacks a suggestion to combine with T for the purpose of preventing breakage in nylon rope.
(C) cannot support a prima facie case of obviousness because T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(D) can support a prima facie case of obviousness, even though T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(E) can support a prima facie case of obviousness because the applicant is always under an obligation to submit evidence of non-obviousness regardless of whether the examiner fully establishes a prima facie case of obviousness.
P21. 4.03.a.45. An examiner’s answer, mailed on January 2, 2003, contains a new ground of rejection in violation of 37 CFR 1.193(a)(2). If an amendment or new evidence is needed to overcome the new ground of rejection, what is the best course of action the appellant should take in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) File a reply brief bringing the new ground of rejection to the attention of the Board of Patent Appeals and Interferences and pointing out that 37 CFR 1.193(a)(2) prohibits entry of the new ground of rejection.
(B) File a timely petition pursuant to 37 CFR 1.181 seeking supervisory review of the examiner’s entry of an impermissible new ground of rejection in the answer, after efforts to persuade the examiner to reopen prosecution or remove the new ground of rejection are unsuccessful.
(C) File a reply brief arguing the merits of the new ground of rejection.
(D) File an amendment or new evidence to overcome the new ground of rejection.
(E) Ignore the new ground of rejection.
P22. 4.03.p.45. Al files an application for a patent. After the Notice of Allowance is mailed and the issue fee has been paid Al discovers a prior art reference which is material to patentability. What should Al do in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) Al should file a prior art statement under 37 CFR 1.501 that will be placed in the patent file upon issuance of the application as a patent.
(B) Since the issue fee has been paid, Al no longer has a duty to disclose to the Office material prior art. He is under no obligation to submit the prior art reference to the Office.
(C) Since the issue fee has been paid, it is too late to have the examiner consider the reference in this application. Al should file a continuation application to have the reference considered and allow the original patent application to issue as a patent.
(D) Al should file a petition to have the application withdrawn from issuance, citing the finding of additional material prior art as the reason for withdrawal. A continuation application should also be filed with an information disclosure statement containing the reference in order to have the reference considered.
(E) Al should file an amendment under 37 CFR. 1.312 deleting all of the claims which are unpatentable over the reference since an amendment deleting claims is entitled to entry as a matter of right.
P23. 10.03.a.46. In accordance with the patent law, rules and procedures as related by the MPEP, which of the following is not a “printed publication” under 35 USC 102(b), with respect to a patent application filed June 1, 2002?
(A) A paper that was orally presented at a meeting held May 1, 2001, where the meeting was open to all interested persons and the paper was distributed in written form to six people without restriction.
(B) A doctoral thesis that was indexed, cataloged, and shelved May 1, 2001, in a single, university library.
(C) A research report distributed May 1, 2001, in numerous copies but only internally
within an organization to persons who understood the organization’s unwritten policy of confidentiality regarding such reports.
(D) A reference available only in electronic form on the Internet, which states that it was publicly posted May 1, 2001.
(E) A technical manual that was shelved and cataloged in a public library as of May 1, 2001, where there is no evidence that anyone ever actually looked at the manual.
P24. 10.03.p.46. A primary examiner is examining a patent application. The application includes a specification and a single claim to the invention that reads as follows:
1. A building material to be used as an alternative to brick in the construction of a house, said building material comprising compressed refuse, the majority of which is wood.
In the specification, the inventor explains that the wood to be used in the inventive building material should be balsa wood. According to the specification, balsa-containing building material has the advantage of being lighter than brick. In a first Office action mailed to the registered practitioner representing the inventor the single claim was rejected as anticipated under 35 U.S.C. § 102 over Patent A. Patent A issued more than one year before the effective filing date of the application, and teaches a building material to be used as an alternative to brick in the construction of a house comprising compressed refuse, the majority of which is pine. The practitioner replies to the first Office action by arguing that the invention is different from that of Patent A. According to the practitioner, the inventor uses balsa wood, not pine. The claim has not been amended. Which of the following describes how the examiner should proceed in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The examiner should allow the claim.
(B) The examiner should allow the claim only after including a Reasons for Allowance pointing out that the inventor argues that her invention is directed to using balsa wood, not pine.
(C) The examiner should issue a Final Rejection again rejecting the claim as anticipated under 35 USC102 over Patent A.
(D) The examiner should reopen prosecution and begin anew, this time searching for a reference that shows a building material containing balsa wood.
(E) The examiner should withdraw the rejection but issue a new Office action this time rejecting the claim under 35 USC 112, second paragraph, because the claim is broad enough to encompass using pine.
P25. 4.00.a.14. On August 7, 1997, practitioner Costello filed a patent application identifying Laurel, Abbot, and Hardy as inventors. Each named inventor assigned his patent rights to Burns just prior to the application being filed. Laurel and Abbot, alone, jointly invented the subject matter of independent claim 1 in the application. Hardy contributed to inventing the subject matter of claim 2. Claim 2 properly depends upon claim 1. The examiner rejected claim 1 and claim 2 under 35 U.S.C. § 102(a) as anticipated by a journal article by Allen, dated July 9, 1997. Laurel, Abbot, and Hardy are readily available to provide evidence in support of and sign an antedating affidavit under 37 C.F.R. § 1.131 showing reduction to practice of the subject matter of claims 1 and 2 prior to July 9, 1997. Which of the following may properly make an affidavit under 37 C.F.R. § 1.131 to overcome the rejection of claims 1 and 2?
(A) Laurel and Abbot.
(B) Laurel, Abbot, and Hardy.
(C) Laurel, Hardy and Burns.
(D) Burns only.
(E) None of the above.
P26. 10.01.a.14. Which of the following is not in accord with proper USPTO practice and procedure?
(A) A written description as filed in a nonprovisional patent application is presumed
adequate under 35 U.S.C. § 112 in the absence of evidence or reasoning to the
contrary.
(B) An examiner may show that a written description as filed in a nonprovisional
patent application is not adequate by presenting a preponderance of evidence why
a person of ordinary skill in the art would not recognize in the applicant’s
disclosure a description of the invention defined by the claims.
(C) A general allegation of “unpredictability in the art” is sufficient to support a
rejection of a claim for lack of an adequate written description.
(D) When filing an amendment, a practitioner should show support in the original
disclosure for new or amended claims.
(E) When there is substantial variation within a genus, an applicant must describe a
sufficient variety of species to reflect the variation within the genus.
P27. 10.01.a.15. Sam is a sole proprietor of Sam’s Labs, which has no other employees. Sam invented a new drug while doing research under a Government contract. Sam desires to file a patent application for his invention and assign it to Sam’s Labs. Sam has licensed Rick, also a sole proprietor with no employees, to make and use his invention. Sam wants to claim small entity status when filing a patent application for his invention. Sam also wants to grant the
Government a license, but will not do so if he will be denied small entity status. Sam has limited
resources and wants to know whether, how, and to what extent he may claim small entity status.
Which of the following is not accurate with respect to proper USPTO procedure in relation to
applications filed on or after January 1, 2001?
(A) Sam’s Labs is a small business concern for the purposes of claiming small entity
status for fee reduction purposes.
(B) If Sam grants a license to the Government resulting from a rights determination
under Executive Order 10096, it will not constitute a license so as to prohibit
claiming small entity status.
(C) The establishment of small entity status permits the recipient to pay reduced fees
for all patent application processing fees charged by the USPTO.
(D) Sam may establish small entity status by a written assertion of entitlement to
small entity status. A written assertion must: (i) be clearly identifiable; (ii) be
signed; and (iii) convey the concept of entitlement to small entity status, such as
by stating that applicant is a small entity, or that small entity status is entitled to
be asserted for the application or patent.
(E) While no specific words or wording are required to assert small entity status, the
intent to assert small entity status must be clearly indicated in order to comply
with the assertion requirement.
P28. 4.02.a.32. Johnnie owns a supermarket store in Cleveland, Ohio, and is constantly frustrated when little children drop their chewing gum on Johnnie’s clean floor in the supermarket. In her spare time, Johnnie develops an entirely novel type of coating material that she applies to floor tile. The coating material resists adhesion to chewing gum. In order to
check out the effectiveness of the floor tile coating material, on December 31, 2000, she
secretly covers the floor tiles in her supermarket with the new chewing gum resistant
floor tile coating material. Johnnie is amazed at the results inasmuch as cleaning the
floor was never easier. On January 30, 2001, Johnnie, satisfied with the experimental use
results, ceased testing the use of the coating material. The ability of the coating material
to withstand chewing gum adhesion continued unabated throughout the remainder of
2001. On January 1, 2002, one of Johnnie’s many customers, James, remarked at how
clean the floor looked. Johnnie then told James of her invention. James thinks for one
moment and suggests that the floor tile coating material may be useful in microwave
ovens, so that food will not stick to the interior sides of the microwave oven. James
discusses getting patent protection with Johnnie. Which of the following is true?
(A) Johnnie could never be entitled to a patent on a floor tile in combination
with a coating material affixed to the outer surface of the tile.
(B) James can be named as a coinventor with Johnnie in a patent application
claiming a microwave oven wherein the internal surfaces of the oven are
coated with the coating material.
(C) Since for one year Johnnie told nobody that the floor tile in her
supermarket contained the new chewing gum resistant coating material,
she would never be barred from obtaining patent protection for the floor
coating material.
(D) Use of the floor tile coating material in microwave ovens would have been
obvious to one of ordinary skill in the art, since James thought of it within
seconds after first learning of the floor tile coating material, and James
was not skilled in the art.
(E) The floor tile having the coating material affixed to the outer surface of
the tile, an article of manufacture, would not be patentable as of January 1,
2002 inasmuch as the article was in public use on the supermarket floor
for one year.
P29. 4.02.p.18. Roger Rocket is a designer of paper cups at Paper America. During his free time, he likes to attend baseball games at Yankee Stadium. One day, while seated in the stands,
he caught a fly ball. He took the baseball home and played catch with his friends Andy
Cannon, Orlando Torpedo, and Mariano Missle. Unfortunately for Rocket, Cannon has a
problem with accuracy. Cannon threw the ball over Rocket’s head and straight through a
neighbor’s front window. The shattered glass ripped the lining off of the baseball.
Instantly, Rocket conceived a more durable baseball with an exterior similar to that of a
golf ball. Rocket worked for months on his invention in Missle’s garage. His new
baseball was comprised of a titanium core, and a plastic shell having circular dimples and
V-shaped laces. Torpedo realized and told Rocket that Y-shaped laces would enable
baseball players to throw the ball faster. Cannon, an engineer in a radar gun laboratory,
tested the velocity of the baseball with both V and Y-shaped laces. To Cannon’s surprise,
the baseball traveled 10 M.P.H. faster with the Y-shaped laces. Rocket wanted patent
protection for a baseball having a titanium core, and a plastic shell having circular
dimples and Y-shaped laces, so he approached Yogi Practitioner for assistance. Rocket
has no obligation, contractual or otherwise, to assign his inventions to Paper America.
In accordance with proper USPTO practice and procedure, who should execute
the oath?
(A) Rocket
(B) Rocket and Torpedo
(C) Rocket and Cannon
(D) Rocket, Torpedo, and Cannon
(E) Rocket, Torpedo, Cannon, and Missle.
P30. 4.02.p.19. Before executing the oath, Rocket wanted to ask Practitioner a question. On his way to Practitioner’s office, Rocket was instantly killed when a drunk driver hit his car.
The officers or employees of Paper America are not related to Rocket. Who can execute
an oath on Rocket’s behalf?
(A) The President of Paper America
(B) The CEO of Paper America
(C) Rocket’s manager at Paper America
(D) Rocket’s legal representative
(E) None of the above
P31. 4.02.p.20. Practitioner received all of the proper papers required to
receive a filing date. However, due to an unexpected emergency, he had to fly out of the
country that evening to conduct discovery in another matter. Practitioner knew that he
would be out of the office for at least 4 weeks, so before leaving, he left a note instructing
his assistant to file the Rocket application on October 13, 2001, using an Express Mailing
label. His assistant did not see the note until 8:00 P.M. on Friday, October 19, 2001. On
Monday, October 22, 2001, Rocket’s assistant deposited the Rocket application in the
United States Postal Service with a proper Express Mailing label. The Postal Service
properly completed a legible label showing an October 22, 2001 date in. The
correspondence was received in the USPTO on October 27, 2001. What is the filing date
of the Rocket application absent any Postal Service Emergency?
(A) October 12, 2001
(B) October 13, 2001
(C) October 19, 2001
(D) October 22, 2001
(E) October 27, 2001
P32. 10.02.a.8. The MPEP and USPTO rules and procedure provide for ways that a nonstatutory double patenting rejection can be overcome. Which of the following is an effective way to overcome a nonstatutory double patenting rejection?
(A) Filing a 37 CFR 1.131 affidavit to swear behind the patent on which the rejection is based.
(B) Filing a terminal disclaimer under 37 CFR 1.321(c).
(C) Filing a 37 CFR 1.131 affidavit arguing that the claims are for different inventions that are not patentably distinct.
(D) Filing a reply arguing that there is only one common inventor regarding the claims of the application and the claims of the patent.
(E) All of the above.
P33. 10.02.p.14. Which of the following timely actions should you take to accord maximum patent protection at minimum government fees for your client whose invention is described in a provisional patent application that was filed 6 months ago with no claim?
(A) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112 and the proper fee set forth in 37 CFR 1.17(i).
(B) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 CFR 1.17(i), and the basic filing fee for the nonprovisional application.
(C) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 CFR 1.17(i), the basic filing fee for the nonprovisional application, and the surcharge required by 37 CFR 1.16(e).
(D) File a nonprovisional application including at least one claim accompanied by a proper executed declaration, and the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).
(E) File a nonprovisional application including at least one claim accompanied by a proper executed declaration but without the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).
P34. 4.03.a.8. Following a restriction requirement and election, a registered practitioner received a first Office action dated Friday, December 1, 2000. The primary examiner indicated that claims 1 to 10 were rejected and claims 11 to 20 were withdrawn from consideration. The first Office action set a 3 month shortened statutory period for reply. On February 28, 2001, the practitioner properly filed an express abandonment in the application and at the same time filed a request for continuing application. In a non-final Office action dated May 1, 2001 in the continuing application, the examiner indicated in that claims 1 to 20, all of the pending claims, are rejected. The practitioner filed a notice of appeal on Monday, July 2, 2001. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following most accurately describes the propriety of the practitioner’s reply to the May 1st Office action?
(A) The notice of appeal is not a proper response because the claims of the continuing application have not been finally rejected.
(B) The notice of appeal is not a proper reply because all of the claims in the continuing application have not been twice rejected.
(C) The filing of a notice of appeal is not a proper reply because not all the claims in the continuing application have been twice rejected.
(D) A notice of appeal is never a proper response to a non-final rejection.
(E) The reply is proper.
P35. 4.03.p.12. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?
(A) Interferences will generally be declared even when the applications involved are owned by the same assignee since only one patent may issue for any given invention.
(B) A senior party in an interference is necessarily the party who obtains the earliest actual filing date in the USPTO.
(C) Reexamination proceedings may not be merged with reissue applications since third parties are not permitted in reissue applications.
(D) After a reexamination proceeding is terminated and the certificate has issued, any member of the public may obtain a copy of the certificate by ordering a copy of the patent.
(E) None of the above.
P36. 10.03.a.6. In a reexamination proceeding a non-final Office action dated November 8, 2001 set a shortened statutory period of 2 months to reply. The patent owner, represented by a registered practitioner, filed a response on March 7, 2002, which included an amendment of the claims. No request for an extension of time was received. As of May 8, 2002, which of the following actions would be in accord with the patent laws, rules and procedures as related in the MPEP?
(A) The registered practitioner should file a request and fee for an extension of time of two months.
(B) The registered practitioner should file a petition for revival of a terminated reexamination proceeding showing the delay was unavoidable or unintentional, and the appropriate petition fee for entry of late papers.
(C) The primary examiner responsible for the reexamination should mail a Notice of Allowance and grant a new patent. The patent owner’s failure to timely respond to the outstanding Office action does not affect the allowability of the claims in the patent.
(D) The examiner should provide an Office action based upon the claims in existence prior to the patent owner’s late amendment, and mail a Final Office action.
(E) The registered practitioner should request an extension of time of four months, and file a Notice of Appeal.
P37. 10.03.p.6. Inventor Tip, a scientist in a pencil research laboratory, theorized that, based on the abrasive properties of moon dust, a highly efficient erasure can be made by adding a trace amount of moon dust to a normal pencil erasure formulation. Point, in the Sales department, determined that this would be perfect for a high end product. A U.S. patent application has been filed claiming a pencil erasure formulation with a trace amount of moon dust. An example of how to make the formulation with specified percentages of moon dust is presented therein. Thereafter, Tip learns about the duty to disclose information and he recalls signing a declaration under 37 CFR 1.63 stating that he had reviewed and understood the contents of the specification including the claims. Tip becomes concerned that the use of moon dust was only a theory and that to obtain patent would mislead the public to conclude that moon dust was actually used and found to be effective. The application has been allowed, but the issue fee has not yet been paid. Which of the following is most in accord with patent laws, rules and procedures as related in the MPEP?
(A) Point is under a duty to disclose material information to the USPTO.
(B) Tip is under a duty to disclose his concern regarding the moon rock information to the USPTO.
(C) Both Point and Tip are under a duty to disclose material information to the UPSTO.
(D) There is no duty to disclose information regarding how the moon rock formulation was developed to the USPTO.
(E) Inasmuch as the application is allowed, an appropriate Request for Continued Prosecution pursuant to 37 CFR 1.114 needs to be filed accompanied by a information disclosure regarding the possibility of rejections under 35 USC 101, and 112, first paragraph.
P38. 4.00.a.34. You have just received an Office action rejecting all of your claims in your patent application as anticipated under 35 U.S.C. § 102(a) using published declassified material as the reference. The examiner explains that the declassified material is being used as prima facie
evidence of prior knowledge as of the printing date. The published declassified material contains
information showing that it was printed six months before the filing date of the application, and
that it was published two months after the application’s filing date. You correctly note that
although the printing date precedes your application filing date by six months, you note that the
publication was classified as of its printing date (thus, available only for limited distribution even
when the application was filed), and was not declassified until its publication date (when it
became available to the general public). Each element of the claimed invention is described in
the publication of the declassified material. Which of the following statements is true?
(A) The rejection is not supported by the reference.
(B) The publication is not available as a reference because it did not become available
to the general public until after the filing date of your patent application.
(C) The publication is prima facie evidence of prior knowledge even though it was
available only for limited distribution as of its printing date.
(D) The publication constitutes an absolute statutory bar.
(E) It is not possible to use a Rule 131 affidavit or declaration to antedate the printing
date of the publication.
P39. 4.02.p.22. Patentee, Iam Smarter, filed and prosecuted his own nonprovisional patent
application on November 29, 1999, and received a patent for his novel cellular phone on
June 5, 2001. He was very eager to market his invention and spent the summer meeting
with potential licensees of his cellular phone patent. Throughout the summer of 2001, all
of the potential licensees expressed concern that the claim coverage that Smarter obtained
in his cellular phone patent was not broad enough to corner the market on this
technology, and therefore indicated to him that they feel it was not lucrative enough to
meet their financial aspirations. By the end of the summer, Smarter is discouraged. On
September 5, 2001, Smarter consults with you to find out if there is anything he can do at
this point to improve his ability to market his invention. At your consultation with
Smarter, you learn the foregoing, and that in his original patent application, Smarter had a
number of claims that were subjected to a restriction requirement, but were nonelected
and withdrawn from further consideration. You also learn that Smarter has no currently
pending application, that the specification discloses Smart’s invention more broadly than
he ever claimed, and that the claims, in fact, are narrower than the supporting disclosure
in the specification. Which of the following will be the best recommendation in
accordance with proper USTPO practice and procedure?
(A) Smarter should immediately file a divisional application under 37 CFR
1.53(b) including the nonelected claims that were subjected to a restriction
requirement in the nonprovisional application that issued as the patent.
(B) Smarter should file a reissue application under 35 U.S.C. § 251, including
the nonelected claims that were subjected to the restriction requirement in
the nonprovisional application that issued as the patent.
(C) Smarter should file a reissue application under 35 U.S.C. § 251,
broadening the scope of the claims of the issued patent, and then file a
divisional reissue application presenting only the nonelected claims that
were subjected to a restriction requirement in the nonprovisional
application which issued as the patent.
(D) Smarter should simultaneously file two separate reissue applications under
35 U.S.C. § 251, one including broadening amendments of the claims in
the original patent, and one including the nonelected claims that were
subjected to a restriction requirement in the nonprovisional application
which issued as the patent.
(E) Smarter should file a reissue application under 35 U.S.C. § 251 on or
before June 5, 2003, broadening the scope of the claims of the issued
patent.
P40. 10.02.a.34. Jane files a nonprovisional application with the USPTO containing at least one drawing figure under 35 USC 113 (first sentence) and at least one claim. Subsequently, Jane receives a “Notice of Omitted Items” from the USPTO indicating that the application which Jane filed lacks page 5 of the specification. Assuming that the application without page 5 satisfies 35 USC 112, which of the following statements is true based on proper USPTO practice and procedure?
(A) If Jane is willing to accept the application as filed, she need not respond to the Notice, and the Office will accord the filing date of the original application. Jane will need to file an amendment renumbering the pages consecutively and canceling incomplete sentences caused by the missing page 5.
(B) Jane must promptly submit the omitted page and accept an application filing date as of the date of submission of the omitted page.
(C) Jane must promptly submit the omitted page and will be accorded a filing date as of the date of filing the original application.
(D) Within 3 months of the Notice date, Jane must file an affidavit asserting that page 5 was in fact deposited in the USPTO with the original application. Jane will be accorded the filing date of the original application.
(E) Within 3 months of the Notice date, Jane must file a proper petition asserting that page 5 was in fact deposited in the USPTO with the original application, accompanied by the proper petition fee and evidence that page 5 was in fact deposited as alleged. Jane will be accorded the original filing date of the application.
P41. 10.02.p.34. On Monday, May 13, 2002, John’s secretary deposited in an “Express Mail” drop box prior to the last scheduled pick-up for that day, an envelope properly addressed to the USPTO for delivery to the USPTO by the “Express Mail Post Office to Addressee” service. The envelope was received by the USPTO on Wednesday, May 15, 2002, containing a reply to an Office action which set a shortened statutory period (“SSP”) for reply ending on Tuesday, May 14, 2002. The reply was marked by the Office as being received on May 15, 2002. The number of the “Express Mail” mailing label had not been placed on the response papers, and upon receipt of the “Express Mail” mailing label John learned that the “date in” was not clearly marked. John promptly filed a petition requesting the filing date to be the date of deposit. The petition included a showing that the date of deposit accompanied by evidence of USPS corroboration of the deposit. Accordingly,
(A) The reply will be regarded as timely filed in the USPTO on May 15, 2002.
(B) The reply will be regarded as timely filed in the USPTO on May 14, 2002.
(C) The reply will be regarded as timely filed in the USPTO on May 13, 2002.
(D) The reply will be regarded as timely filed in the USPTO if a petition with proper fee for a one month extension of time is filed in the USPTO on or before June 14, 2002.
(E) The reply will be regarded as timely filed in the USPTO if the number of the “Express Mail” mailing label is placed on each page of a copy of the original response and hand carried to the USPTO on May 15, 2002, rather than being sent by “Express Mail.”
P42. 4.03.a.44. A claim in an application recites “[a] composition containing: (a) 35-55% polypropylene; and (b) 45-65% polyethylene.” The sole prior art reference describes, as the only relevant disclosure, a composition containing 34.9% polypropylene and 65.1% polyethylene. In accordance with USPTO rules and procedures set forth in the MPEP, the primary examiner should properly:
(A) Indicate the claim allowable over the prior art because there is no teaching, motivation or suggestion to increase the amount of polypropylene from 34.9% to 35% and decrease the amount of polyethylene from 65.1% to 65%.
(B) Reject the claim under 35 USC 102 as anticipated by the prior art reference.
(C) Reject the claim under 35 USC 103 as obvious over the prior art reference.
(D) Reject the claim alternatively under 35 USC 102 as anticipated by or under 35 USC 103 as obvious over the prior art reference.
(E) None of the above.
P43. 4.03.p.44. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following, if any, is true?
(A) The loser in an interference in the PTO is estopped from later claiming he or she was the first to invent in a Federal District Court since the loser must win in the USPTO or he/she will lose the right to contest priority.
(B) A person being sued for infringement may file a request for reexamination without first obtaining the permission of the Court in which the litigation is taking place.
(C) A practitioner may not represent spouses, family members or relatives before the USPTO since such representation inherently creates a conflict of interest and a practitioner is likely to engage in favoritism over his/her other clients.
(D) Employees of the USPTO may not apply for a patent during the period of their employment and for two years thereafter.
(E) None of the above.
P44. 10.03.a.44. A registered practitioner filed in the USPTO a client’s utility patent application on December 30, 2002. The application was filed with a request for nonpublication, certifying that the invention disclosed in the U.S. application has not and will not be the subject of an application in another country, or under a multilateral international agreement, that requires eighteen month publication. Subsequently, the client files an application in Japan on the invention and some recent improvements to the invention. The improvements are not disclosed or supported in the utility application. Japan is a country that requires eighteen month publication. Two months after filing the application in Japan, and before filing any other papers in the USPTO, the client remembers that a nonpublication request was filed and informs the practitioner about the application that was filed in Japan. Which of the following courses of action is in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The application is abandoned because the practitioner did not rescind the nonpublication request and provide notice of foreign filing within 45 days of having filed the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(B) The application is abandoned because the applicant did not rescind the nonpublication request before filing the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(C) The applicant should file an amendment to the specification of the U.S. application, adding the recent improvements to the disclosure in the specification.
(D) The application is abandoned because the applicant did not rescind the nonpublication request by notifying the Office under 37 CFR 1.213(c) within the appropriate time. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(E) The applicant could today notify the USPTO of the foreign filing. It is not necessary to file a petition and fee to revive for the application to continue to be examined in the USPTO.
P45. 10.03.p.45. A patent application has claims 1-10 pending. Claims 1 and 7 are independent claims. Claims 2-6 depend directly from claim 1 while claims 8-10 depend directly from claim 7. Claims 1-10 have been twice rejected by the primary examiner under 35 USC 103(a) as being unpatentable over Smith patent in view of Jones patent. The applicant has appealed the rejection to the Board of Patent Appeals and Interferences. In the brief under the “grouping of claims” section, appellant states that each of the claims is separately patentable. In the arguments section of the brief, appellant separately argues only claims 1, 4 and 6. In the examiner’s answer, the examiner disagrees with appellant’s claim grouping because all the claims present a similar issue of patentability. The examiner states that the claims all stand or fall together as a single group. In accordance with the patent laws, rules and procedures as related in the MPEP, which claim(s) must the Board consider separately on the merits?
(A) The Board must consider each of claims 1-10 separately on the merits.
(B) The Board must only consider claims 1, 4 and 6 separately on the merits.
(C) The Board must only consider claim 1 separately on the merits.
(D) The Board must consider claim 1 and claim 7 separately on the merits as representative of all the claims on appeal.
(E) The Board must determine which claim is representative of all the claims on appeal and consider only that claim separately on the merits.
P46. 4.00.a.17. Smith invented a laminate. In a patent application, Smith most broadly disclosed the laminate as comprising a transparent protective layer in continuous, direct contact with a light-sensitive layer without any intermediate layer between the transparent protective layer and the light-sensitive layer. The prior art published two years before the effective filing date of Smith’s application included a laminate containing a transparent protective layer and a light-sensitive layer held together by an intermediate adhesive layer. Which of the following is a proper claim that would overcome a 35 U.S.C. § 102 rejection based on the prior art?
(A) 1. A laminate comprising a transparent protective layer and a light-sensitive layer.
(B) 1. A laminate comprising a transparent protective layer and a light-sensitive layer
which is in continuous and direct contact with the transparent protective layer.
(C) 1. A laminate comprising a transparent protective layer and a light-sensitive layer,
but not including an adhesive layer.
(D) (A) and (B).
(E) (B) and (C).
P47. 10.02.a.12. Inventor A filed a patent application and assigned the entire interest in the application to his employer, MegaCorp. The application issued as a utility patent on July 9, 2002. In June 2004, MegaCorp’s management first learns that a second inventor, Inventor B, should have been named as a co-inventor with respect to at least one claim of the issued patent. There was no deceptive intent in failing to name Inventor B in the original application. Inventor A, who is unfamiliar with patent law and concepts of inventorship, incorrectly believes that he should be the sole named inventor on the patent, and refuses to cooperate with any effort by MegaCorp to change the named inventive entity. The issued patent contains no other error. In accordance with the Manual of Patent Examining Procedure, which of the following procedures is/are available for MegaCorp to seek correction of the named inventive entity without any agreement, cooperation or action from Inventor A?
(A) File, on or before July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(B) File, after July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(C) Request a Certificate of Correction to add Inventor B as a named inventor.
(D) Submit in the issued patent file: a Request for Correction of Inventorship Under the Provisions of 37 CFR 1.48 that sets forth the desired inventorship change; a statement by Inventor B that the error in inventorship occurred without deceptive intention on her part; an oath or declaration executed by Inventor B; all required fees; and the written consent of MegaCorp.
(E) A and B are each available procedures.
P48. 10.02.p.16. In which of the following situations, considered independently of each other, is the original, new, or amended claim supported in the application as filed?
(A) An amendment to the specification changing the definition of “holder” from “is a hook” to “is a hook, clasp, crimp, or tong” and no amendment is made of the claim, which uses the term “holder.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.
(B) An amendment to the specification and claims changing the definition of “holder” from “is a hook” to “is a hook, clasp, crimp, or tong.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.
(C) Original claim 1 in the application refers to “a holder,” and original claim 2 depends from and refers to claim 1 stating, “said holder is a hook, clasp, crimp, or tong.” There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a clasp, crimp, or tong.
(D) An amendment is filed presenting a claim to an electrical insulating device, copied from a patent for the purpose of provoking an interference. The claim refers to “nonconductive plastic holder.” The application as filed contains a broad generic disclosure describing electrical insulating devices. The holder is described in the specification of the application as “conducting electricity.” There is no disclosure in the specification of the holder being “nonconductive.”
(E) All of the above.
P49. 4.03.a.11. In accordance with the USPTO rules and procedures set forth in the MPEP, a Certificate of Correction effectuates correction of an issued patent where:
(A) Through error and without deceptive intent, there is a failure to make reference to a prior copending application according to 37 CFR 1.78, and the failure d
OK it cut off the very end of “Test P.” Holy crapola, Patentman! Is this fun or what? Here’s the rest of Test P, and for the next 2 tests I guess I’ll submit them 1/2 at a time so they won’t get cut off:
P49. 4.03.a.11. In accordance with the USPTO rules and procedures set forth in the MPEP, a Certificate of Correction effectuates correction of an issued patent where:
(A) Through error and without deceptive intent, there is a failure to make reference to a prior copending application according to 37 CFR 1.78, and the failure does not otherwise affect what is claimed, but the prior copending application is referenced in the record of the application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(B) Through error and without deceptive intent, a preferred embodiment that materially affects the scope of the patent was omitted in the original disclosure in the filed application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(C) Through error and without deceptive intent, a prior copending application is incorrectly referenced in the application, the incorrect reference does not otherwise affect the claimed subject matter, and the prior copending application is correctly identified elsewhere in the application file, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(D) Through error and without deceptive intent, an inventor’s name is omitted from an issued patent, a petition under 37 CFR 1.324 and appropriate fees were filed, and the petition was granted.
(E) (A), (C) and (D).
P50. 4.03.p.13. Prior to filing a patent application for a client, a registered practitioner determined that the client was entitled to claim small entity status under 37 CFR 1.27. The practitioner filed a patent application for the client on November 1, 2002 together with a claim for small entity status under 37 CFR 1.27. On December 2, 2002, a Notice to File Missing Parts was mailed setting a two month period for reply and requiring the basic filing fee and the surcharge under 37 CFR 1.16(e). The practitioner timely submitted the small entity fees for the basic filing fee and the surcharge as required in the Notice. Shortly thereafter, the practitioner discovered that on October 31, 2002, the day before the application was filed, the client, without advising the practitioner, had assigned all rights in the invention that is the subject of the application to an entity that would not qualify for small entity status under 37 CFR 1.27. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following actions would be the best action for the practitioner to take?
(A) File a continuing application under 37 CFR 1.53(b) with the large entity filing fee and then file a letter of express abandonment under 37 CFR 1.138 in the original application after the continuing application has been accorded a filing date.
(B) Promptly file a notification of loss of small entity status under 37 CFR 1.27(g) and, thereafter, pay large entity fees whenever any subsequent fees are required.
(C) Wait until a Notice of Allowance is received and then timely submit the large entity issue fee along with a notification of loss of small entity status under 37 CFR 1.27(g).
(D) File a paper under 37 CFR 1.28(c) requesting that the good faith error in claiming small entity status be excused and complying with the separate submission and itemization requirements of 37 CFR 1.28(c) and including payment of the deficiency owed.
(E) Pay the difference between the large entity filing fee and small entity filing fee and the difference between the large entity surcharge and small entity surcharge within two months from the mail date of the Notice to File Missing Parts.
Test P Answers
1.D 22.D 43.B
2.C 23.C 44.A
3.E 24.C 45.B
4.E 25.B 46.E
5.E 26.C 47.E
6.C 27.C 48.C
7.B 28.B 49.E
8.A 29.B 50.D
9.E 30.D
10.B 31.E
11.D 32.B
12.A 33.D
13.B 34.E
14.C 35.D
15.B 36.B
16.D 37.D
17.C 38.C
18.E 39.E
19.D 40.A
20.D 41.D
21.B 42.C
Number 31 on test “P” has the wrong answer in the answer key. This question comes from 4.02.20p, and the correct answer is D, not E. Proof: http://mypatentbar.com/wp-content/uploads/2008/05/patent-april02afternoonanswers.pdf
Obviously it goes without saying that we’re all very grateful that you’ve done this for us, Mambo5
First half of Test X:
X1. 10.03.a.7. On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Bloc. The application includes a specification and a single claim to the invention which reads as follows:
1. Compound Y.
In the specification, Bloc explains that compound Y is an intermediate in the chemical manufacture of synthetic Z. With respect to synthetic Z, the specification discloses its structural formula and further states that synthetic Z is modeled on the natural form of Z to give it the same therapeutic ability to alleviate pain. The specification goes on to state that synthetic Z is also a cure for cancer. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 U.S.C. 101 as being inoperative; that is, the synthetic Z does not operate to produce a cure for cancer (i.e., incredible utility). Bloc believes he is entitled to a patent to his compound Y. In accordance with the patent laws, rules and procedures as related in the MPEP, how best should the practitioner reply to the rejection of the claim?
(A) Advise Bloc that he should give up because a cure for cancer is indeed incredible and is unproven.
(B) File a reply arguing that a cure for cancer is not incredible and he can prove it if given the chance.
(C) File a reply arguing that whether or not a cure for cancer is incredible is superfluous since Bloc has disclosed another utility – alleviating pain, which is not incredible.
(D) File a reply arguing that the claim is directed to compound Y, not synthetic Z.
(E) File a reply arguing that synthetic Z is modeled on the natural form of Z.
X2. 10.03.p.7. The claimed invention in a patent application is directed to an explosive composition “comprising 60-90% solid ammonium nitrate, and 10-40% water-in-oil in which sufficient aeration is entrapped to enhance sensitivity to a substantial degree.” The application discloses that the explosive requires both fuel (the ammonium nitrate), and oxygen to “sensitize the composition.” A prior art reference, published more than two years before the effective filing date of the application, discloses explosive compositions containing water-in-oil emulsions having identical ingredients to those claimed, in ranges overlapping with the claimed composition. The only element of the claim not recited in the reference is “sufficient aeration entrapped to enhance sensitivity to a substantial degree.” The reference does not recognize that sufficient aeration sensitizes the fuel to a substantial degree. In addition to the prior art reference, a printed publication contains test data demonstrating that “sufficient aeration” is necessarily an inherent element in the prior art blasting composition under the circumstances. In accordance with the patent laws, rules and the procedures as related in the MPEP, the prior art reference:
(A) anticipates the claim because it discloses every limitation of the claim either explicitly or inherently.
(B) does not anticipate the claim because the prior art reference does not recognize an inherent property.
(C) does not anticipate the claim because the prior art reference does not recognize an inherent function of oxygen.
(D) does not anticipate the claim because the prior art reference does not recognize an inherent ingredient, oxygen.
(E) (B), (C) and (D).
X3. 4.00.a.32. Nonobviousness of a claimed invention may be demonstrated by:
(A) producing evidence that all the beneficial results are expected based on the
teachings of the prior art references.
(B) producing evidence of the absence of a property the claimed invention would be
expected to possess based on the teachings of the prior art.
(C) producing evidence showing that unexpected results occur over less than the
entire claimed range.
(D) producing evidence showing that the unexpected properties of a claimed invention
have a significance less than equal to the expected properties.
(E) (A), (B), (C) and (D).
X4. 4.02.a.30. In accordance with the MPEP, and USPTO rules and procedure, a patent application may be made by someone other than the inventor in certain situations. In which of the following situations would an application not be properly made by someone other than the inventor?
(A) The inventor is deceased, and the application is made by the legal representative of the deceased inventor.
(B) The inventor is deceased, and the application is made by one who has reason to believe that he or she will be appointed legal representative of the deceased inventor.
(C) The inventor is a minor (under age 18) who understands and is willing to execute the declaration, but the application is made by the minor’s legal representative.
(D) The inventor is insane, and the application is made by the legal representative of the insane inventor.
(E) The inventor is legally incapacitated, and the application is made by the legal representative of the legally incapacitated inventor.
X5. 4.03.a.42. Which of the following practices or procedures may be employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(e)?
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art.
(B) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.”
(C) Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent that either claims the same invention or claims an obvious variation of the subject matter in the rejected claim(s).
(D) (A) and (C).
(E) (A), (B) and (C).
X6. 4.03.p.42. Paprika is a known product. A patent application discloses a composition which is made by subjecting paprika to processing steps X, Y and Z. The composition is disclosed to be useful in treating cancer. The application was filed June 1, 2002. A reference published May 1, 2001 discloses a food product made by subjecting paprika to processing steps X, Y and Z. The reference does not disclose that the resulting composition has any properties that would make it useful for treating cancer. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following claims is not anticipated by the reference?
(A) A composition made by the process of subjecting paprika to processing steps X, Y and Z, wherein the composition is effective for treating cancer.
(B) A composition for treating cancer, made by the process of subjecting paprika to processing steps X, Y and Z.
(C) A method of making a cancer-treating composition, comprising subjecting paprika to processing steps X, Y and Z.
(D) A method of treating cancer, comprising administering an effective amount of a composition made by subjecting paprika to processing steps X, Y and Z.
(E) All of the above.
X7. 4.03.a.42. A registered practitioner filed a first patent application wherein claims 1-10 claims are directed to a widget and claims 11-20 are directed to a method of making a widget. Following a proper restriction requirement, claims 1-10 were elected for prosecution. The primary examiner rejected claims 1-10. The practitioner filed a reply that only consisted of argument. The examiner was unpersuaded by the argument, and entered a final rejection of claims 1-10. In reply, the practitioner filed a continuing application containing claims 1-10 directed to a widget, and claims 11-20 directed to a method of using a widget. In the continuing application, the examiner enters a new written restriction requirement requiring a provisional election between claims 1-10 and claims 11-20. The practitioner believes the new restriction requirement is improper and would like the rejection in the parent application reviewed as well. The new restriction requirement has not been made final. Which of the following best describes whether and why, in accordance with the patent laws, rules, and procedures as related by the MPEP, the reply to the restriction requirement may be by appeal to the Board of Patent Appeals and Interferences?
(A) Yes. An immediate appeal to the Board can be filed to review the restriction requirement if any claims have been twice rejected.
(B) No. An immediate appeal cannot be filed to the Board because the new claims directed to a method of using a widget have not been twice rejected.
(C) Yes. An immediate appeal can be filed for any claims that have been twice rejected because the Board can also review any second restriction requirement made against the same claims.
(D) No. An immediate appeal to the Board cannot be lodged because a provisional election has not been made of either the claims to a widget or claims to a method of use of the widget.
(E) No. An immediate appeal cannot be taken because no claims are currently under rejection. Review of a final restriction requirement is only possible as a petitionable matter before a Technology Center Director. It is not an appealable matter to the Board.
X8. 4.03.p.44. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding claim interpretation is the most correct?
(A) A claim having the transition term “comprising” is limited to only the limitations, elements or steps recited in the claim, and is not inclusive or open-ended of other unrecited elements or steps.
(B) The transition term “consisting essentially of” limits the claim to the limitations recited in the claim and additional elements or steps which do not materially affect the basic and novel characteristics of the claimed invention.
(C) A claim having the transition term “consisting of” is not limited to the elements or steps recited in the claim, but can include elements or steps other than those recited in addition to any impurities ordinarily associated therewith.
(D) A claim which depends from a claim which claims an invention “consisting of” the recited elements or steps can add an element or step to further limit the claimed invention.
(E) All of the above.
Please answer questions 23 and 24 based on the following facts. Jo invented a new and unobvious technique for inexpensively manufacturing a chemical that has been used in paper mills for years to bleach paper. Tommie developed a new and unobvious technique to clean-up toxic waste spills. Jo and Tommie collaborated to invent a method to clean-up toxic waste spills using the chemical made according to the unobvious technique invented by Jo. The inventions have been assigned to your client Dowel Chemical Company. You prepared a single patent application fully disclosing and claiming each invention. Claims 1-9 were directed to the method of manufacturing; claims 10-19 were directed to the method of cleaning up toxic waste spills; and claim 20 was directed to a method of cleaning up toxic waste spills using the chemical manufactured in accordance with claim 1. Both inventors approve the application, but Tommie is unavailable to sign an oath before an upcoming statutory bar. Accordingly, you are instructed to immediately file the application without an executed oath. On June 1, 1999, you file the application along with an information sheet to identify the application. However, you do not notice that Tommie was inadvertently left off the list of inventors on the information sheet, which listed Jo as the sole inventor. After receiving a Notice to File Missing Parts, you submit an oath executed by both Jo and Tommie. No paper was filed to change the named inventive entity. You later receive an Office action requiring restriction between Jo’s invention and Tommie’s invention. In reply to the restriction requirement, you elect Jo’s invention, cancel claims 10-20, and immediately file a divisional application directed to the invention of claims 10-19. Claim 20 was omitted from the divisional application. The divisional application includes a specific reference to the original application and is files with an inventor’s oath executed by Tommie only. The divisional application incorporated the original application by reference.
X9. 4.00.a.23. Which of the following statements is correct?
(A) Because the original application as filed only named Jo as an inventor, Tommie’s divisional application is not entitled to the filing date of the original Application because there is no common inventor between the original application and the divisional application.
(B) The incorrect inventorship listed on the information sheet of the original application was never properly corrected and, therefore, any patent issuing on that application will be invalid under 35 U.S.C. § 116 unless the inventorship is later corrected.
(C) After canceling claims 10-20, it is necessary to change the named inventive entity in the original application by filing a petition including a statement identifying Tommie as being deleted and acknowledging that Tommie’s invention is no longer being claimed in the application and an appropriate fee.
(D) Written consent of the Dowel Chemical Company is required before Tommie can be deleted as an inventor in the original application.
(E) It is necessary in the divisional application to file a petition including a statement identifying Jo as being deleted as an inventor and acknowledging that Jo’s invention is not being claimed in the divisional application.
X10. 4.00.a.24. Which of the following statements is most correct?
(A) Since claim 20 was omitted from the divisional application as filed, it cannot be added to the divisional application by subsequent Amendment because such an Amendment would constitute new matter.
(B) It was improper to include Tommie and Jo as joint inventors in the patent application.
(C) The examiner may properly make a provisional obviousness-type double patenting rejection in the divisional application based on the parent application, but that rejection may be readily overcome with the filing of a terminal disclaimer.
(D) Because the inventive entity of the amended parent application is different than the inventive entity of the divisional application, the examiner may reject the claims of the divisional application under the provisions of 30 U.S.C. § 102(e).
(E) Statements (A), (B), (C) and (D) are each incorrect.
X11. 10.02.a.17. Which of the following statements is true?
(A) In the context of 35 USC 102(b), a magazine need only be placed in the mail to be effective as a printed publication.
(B) The earliest date declassified printed material may be taken as prima facie evidence of prior knowledge under 35 USC 102(a) is as of the date the material is cataloged and placed on the shelf of a public library.
(C) Declassified printed material is effective as a printed publication under 35 USC 102(b) as of the date of its release following declassification.
(D) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed on or after November 29, 2000.
(E) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed prior to November 29, 2000 which have been voluntarily published.
X12. 4.03.a.12. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. A first Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a U.S. patent application publication to Smith in view of a U.S. patent to Jones. A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner also observes that the Smith patent application was filed on April 10, 2001 and that the patent application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims, which of the following timely replies would comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for
overcoming the rejection?
(A) A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
(B) A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant has never seen the invention in the Potter application before.
(D) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of Potter application only prior to June 6, 2001.
(E) A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.
X13. 4.03.p.14. Mark Twine obtains a patent directed to a machine for manufacturing string. The patent contains a single claim (Claim 1) which recites six claim elements. The entire interest in Twine’s patent is assigned to the S. Clemens String Co., and Twine is available and willing to cooperate with S. Clemens String Co. to file a reissue application. A subsequent reissue application includes Claim 2, which is similar to original Claim 1. However, one of the elements recited in Claim 2 is broader than its counterpart element in the original claim. The remaining five elements are narrower than their respective counterpart elements in the original patent claim. Which of the following scenarios accords with the USPTO rules and the procedures set forth in the MPEP?
(A) The S. Clemens String Co. files the reissue application more than 2 years after the issue date of the original patent application.
(B) The S. Clemens String Co. files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
(C) Mark Twine files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
(D) Mark Twine files the reissue application more than 2 years after the issue date of the original patent.
(E) Mark Twine and the S. Clemens String Co. jointly file the reissue application more than 2 years after the issue date of the original patent.
X14. 10.03.a.8. 35 USC 102(d) establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is not one of the four conditions established by 35 USC 102(d)?
(A) The foreign application must be filed more than 12 months before the effective U.S. filing date.
(B) The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns.
(C) The foreign patent or inventor’s certificate must be actually granted before the U.S. filing date.
(D) The foreign patent or inventor’s certificate must be actually granted and published before the U.S. filing date.
(E) The same invention must be involved.
X15. 10.03.p.8. With respect to establishing “reasonable diligence” for under 35 USC 102(g), which of the following statements is or are in accordance with the patent laws, rules and procedures as related in the MPEP?
(1) The inventor and his attorney must drop all other work and concentrate on the particular invention involved.
(2) The entire period during which diligence is required must be accounted for by either affirmative acts or acceptable excuses.
(3) Work relied upon to show reasonable diligence must be directly related to the reduction to practice.
(A) Statement (1) only
(B) Statement (2) only
(C) Statement (3) only
(D) Statements (1) and (3)
(E) Statements (2) and (3)
X16. 4.00.a.27. On February 8, 1999, you filed a patent application that you prepared for Mr. Bond. The application contains only one claim. The application disclosed a composition having 20%A, 20%B, and either 60%C or 60%D. Claim 1 is as follows:
Claim 1. A composition useful for bonding semiconductor materials to metals, comprising 20%A, 20%B, and 60%C.”
The examiner found a patent to Gold, dated March 8, 1998, which only disclosed and claimed a composition, having 20%A, 20%B, and 60%C, and also taught that the composition would only be useful for insulating metals from corrosion. The examiner rejected Claim 1 under 35 U.S.C. § 102(a) as anticipated by Gold, in an Office action dated August 9, 1999. Which of the following is most likely to overcome the rejection, and comports with proper PTO rules and procedure?
(A) Filing a reply, on March 9, 2000, with a petition for a three-month extension and the fee for a three-month extension, traversing the rejection on the ground that Gold does not disclose using the composition for bonding semiconductor materials to metals, and therefore does not disclose all the elements of Claim 1.
(B) Filing a reply, on September 9, 1999, traversing the rejection on the ground that Gold does not disclose using the composition for bonding semi-conductor materials to metals, and therefore does not disclose all the elements of Claim 1.
(C) Filing a reply on October 9, 1999, amending Claim 1 to state as follows: “Claim 1. A composition comprising: 20%A, 20%B, and 60%D.” In the reply, pointing out why the amendment gives the claim patentable novelty.
(D) Filing a reply on October 9, 1999, traversing the rejection on the grounds that the patent to Gold teaches away from using the invention in the manner taught in Bond’s application.
(E) Filing (i) a 37 C.F.R. § 1.132 affidavit objectively demonstrating the commercial success of the invention as claimed, and (ii) a reply containing an argument why the claimed invention is patentable, but no amendment to Claim 1.
X17. 10.02.a.21. Which of the following documents is not open to public inspection?
(A) The abandoned parent application of a divisional application. A patent was granted on the divisional application, which refers to the abandoned parent application.
(B) Assignment document relating to both an issued patent and a patent application not published under 35 USC 122(b).
(C) Assignment document relating to a pending reissue application.
(D) Copy of assignment record relating to both a pending patent application and an abandoned patent application not published under 35 USC 122(b).
(E) Assignment document relating to both an abandoned patent application not published under 35 USC 122(b) and a pending reissue application.
X18. 4.03.a.41. A claim in a pending patent application is rejected under 35 USC 103(a) as being obvious over Barry in view of Foreman. The Barry reference is a U.S. Patent that was issued on an application filed before the date of the application in question. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?
(A) The Foreman reference is nonanalogous art, but the reference may be reasonably pertinent to Barry’s endeavor to solving the particular problem with which Barry was concerned.
(B) The rejection does not address a claimed limitation, and neither of the references teaches the claimed limitation.
(C) The Barry patent issued after the filing date of the pending patent application.
(D) The original specification states that the results achieved by the claimed invention are unexpected. (The statement is unsubstantiated by evidence).
(E) The Foreman patent issued 105 years before the filing date of the pending patent application.
X19. 4.03.p.41. Evidence that a claim may not comply with the second paragraph of 35 USC 112 occurs in accordance with the USPTO rules and the procedure set forth in the MPEP where:
(A) Remarks filed by applicant in a reply or brief regarding the scope of the invention differ and do not correspond in scope with the claim.
(B) There is a lack of agreement between the language in the claims and the language set forth in the specification.
(C) The scope of the claimed subject matter is narrowed during pendency of the application by deleting the originally much broader claims, and presenting claims to only the preferred embodiment within the originally much broader claims.
(D) Claims in a continuation application are directed to originally disclosed subject matter (in the parent and continuation applications) which applicants did not regard as part of their invention when the parent application was filed.
(E) All of the above.
X20. 10.03.a.41. Assume that each claim 5 is in a different patent application. Recommend which, if any, of the following wording is in accord with the patent laws, rules and procedures as related in the MPEP for a multiple dependent claim.
(A) Claim 5. A gadget according to claims 1-3, in which …
(B) Claim 5. A gadget as in claims 1, 2, 3, and/or 4, in which …
(C) Claim 5. A gadget as in claim 1 or 2, made by the process of claim 3 or 4, in which …
(D) Claim 5. A gadget as in either claim 6 or claim 8, in which …
(E) None of the above are proper multiple dependent claims.
X21. 10.02.a.18. While traveling through Germany (a WTO member country) in December 1999, Thomas (a Canadian citizen) conceived of binoculars for use in bird watching. The binoculars included a pattern recognition device that recognized birds and would display pertinent information on a display. Upon Thomas’ return to Canada (a NAFTA country) in January 2000, he enlisted his brothers Joseph and Roland to help him market the product under the tradename “Birdoculars.” On February 1, 2000, without Thomas’ knowledge or permission, Joseph anonymously published a promotional article written by Thomas and fully disclosing how the Birdoculars were made and used. The promotional article was published in the Saskatoon Times, a regional Canadian magazine that is also widely distributed in the United States. Thomas first reduced the Birdoculars to practice on March 17, 2000 in Canada. A United States patent application properly naming Thomas as the sole inventor was filed September 17, 2000. That application has now been rejected as being anticipated by the Saskatoon Times article. Which of the following statements is most correct?
(A) Thomas can rely on his activities in Canada in establishing a date of invention prior to publication of the Saskatoon Times article.
(B) In a priority contest against another inventor, Thomas can rely on his activities in Canada in establishing a date of invention.
(C) In a priority contest against another inventor, Thomas can rely on his activities in Germany in establishing a date of invention.
(D) Statements (A) and (B) are correct, but statement (C) is incorrect.
(E) Statements (A), (B), and (C) are each correct.
X22. 4.03.a.17. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?
(A) A claim to a process omitting a step in a disclosed process, where the step is disclosed in the specification to be essential to the invention, may not be properly rejected under 35 USC 112, first paragraph, for lack of enablement where the specification provides an enabling disclosure only for the process which includes the essential step.
(B) Failure to disclose the best mode must rise to the level of active concealment or grossly inequitable conduct in order to support a rejection under 35 USC 112, first paragraph.
(C) A claim failing to interrelate essential elements of the invention, as defined by the applicant in the specification, where the interrelation is critical to the invention may be properly rejected under 35 USC 112, second paragraph, for failure to properly point out and distinctly claim the invention.
(D) Where the best mode contemplated by the inventor at the time of filing the application is not disclosed, a proposed amendment adding a specific mode of practicing the invention would not be new matter.
(E) The best mode requirement is the same as the enablement requirement of the first paragraph of 35 USC 112.
X23. 4.03.p.15. Able conceived the invention claimed in a patent application. In conceiving the invention, Able used and adopted ideas and materials known in the art and invented by others. Ben, Able’s employee, reduced the invention to practice at Able’s request and totally pursuant to Able’s suggestions. Being unable to afford a patent practitioner’s fees to prepare and prosecute the application, Able convinced John to pay for the practitioner’s services in return for an interest in the invention. John did nothing more than provide the funds for the practitioner. Which of the following is in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) Able need not be the one to reduce the invention to practice so long as the reduction to practice occurred on his or her behalf. Able can be properly named as inventor in the application.
(B) To be named an inventor, it is not necessary for John to have contributed to the conception of the invention. Ben, not Able, can be named as inventor in the application.
(C) In conceiving the invention, Able may not consider and adopt ideas and materials derived from any sources, such as ideas of previous inventors. Able cannot be properly named as inventor in the application.
(D) John and Able may be properly named as joint inventors of the invention in the application.
(E) John, Ben, and Able may be properly named as joint inventors of the invention in the application.
X24. 10.03.a.9. Smith’s first invention is a new method of fabricating a semiconductor capacitor in a dynamic random access memory (DRAM) cell. Smith filed a first patent application on December 13, 2001 disclosing and claiming the first invention. Smith’s later, second invention, is an improved semiconductor capacitor in a DRAM cell and a method of making it. Smith filed a second application on December 16, 2002, claiming the benefit of the filing date of the copending first application. The second application contains claims 1-20, and a specification that provides support for the claimed subject matter in compliance with 35 USC 112, first paragraph. In the second application, claims 1-10 are drawn to Smith’s first invention, and claims 11-20 are drawn to Smith’s second invention. The primary examiner found a non-patent printed publication authored by Jones published on February 4, 2002. The article discloses the both of Smith’s inventions. Which of the following courses of action by the examiner would be in accord with the patent laws, rules and procedures as related in the MPEP?
(A) The examiner can reject claims 1-20 in the second application using the article because the publication date of the article is earlier than the filing date of the second application.
(B) The examiner cannot reject any of the claims in the second application using the article because the second application claims the benefit of the filing date of the first application.
(C) The examiner can reject claims 1-20 in the second application using the article because the second application is not entitled to the benefit of the filing date of the first application since the second application was filed more than one year from the filing date of the first application.
(D) The examiner can reject claims 1-10, but cannot reject claims 11-20 in the second application because the first application did not disclose the improved capacitor set forth in claims 11-20.
(E) The examiner cannot reject claims 1-10, but can reject claims 11-20 in the second application because the first application did not disclose an improved capacitor set forth in claims 11-20.
X25. 10.03.p.10. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following can a third party submit in a pending published application within two months from the publication date where the submission identifies the application to which it is directed by application number and includes the appropriate fee?
(A) A list referencing a videotape and copy of the tape showing that the process
claimed in the application was in use more than one year before the filing date of
the application.
(B) A U.S. patent issued more than one year before the filing date of the application
and a written explanation of the patent made by the third party on the patent.
(C) A publication with a publication date more than one year before the filing date of
the application and including underlining made by the third party on the
publication.
(D) A protest raising fraud and inequitable conduct issues.
(E) A list of the sole Japanese language publication submitted for consideration,
including the publication date of the publication, a copy of the Japanese language
publication and a written English language translation of the pertinent parts of the
publication.
2nd half of Test X:
X26. 10.03.p.42. The primary examiner has rejected claims 1-10 under 35 USC 103(a) as being unpatentable over the Smith patent in view of the Jones reference. Appellant properly argues that there is no motivation to combine the teachings of Smith and Jones. The examiner repeats the rejection of claims 1-10 as being “unpatentable over Smith in view of Jones.” The examiner additionally cites a patent to Brown that was necessary to provide motivation for combining the teachings of Smith and Jones. The examiner does not list Brown in the statement of the rejection. Appellant timely appeals to the Board of Patent Appeals and Interferences, and files a proper appeal brief. The examiner files an examiner’s answer addressing the rejection of claims 1-10 under 35 USC 103(a) as being unpatentable over Smith in view of Jones, and cites Brown in the argument as providing motivation to combine Smith and Jones. In accordance with the patent laws, rules and procedures as related in the MPEP, what will be the most proper decision of the Board?
(A) The Board will affirm the rejection based on Smith and Jones only.
(B) The Board will affirm the rejection based on Smith, Jones and Brown.
(C) The Board will reverse the rejection based on Smith and Jones only.
(D) The Board will reverse the rejection based on Smith, Jones and Brown.
(E) None of the above.
X27. 10.03.a.39. On May 1, 2001, a complete patent application was filed with the USPTO naming H as the sole inventor. A primary examiner rejected all the claims in the application under 35 USC 102(e) as being anticipated by a U.S. Patent granted to inventors H and S. The patent was granted on September 25, 2001 on an application filed on December 7, 2000. The claims of the patent application and U.S. patent define the same patentable invention as defined in 37 CFR 1.601(n). The U.S. patent and the application have common ownership. Which of the following, if properly submitted by applicant, would overcome the rejection in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) File a terminal disclaimer in accordance with 37 CFR 1.321(c).
(B) File a declaration under 37 CFR 1.131 to establish the inventor invented the subject matter of the rejected claim prior to the effective date of the reference X.
(C) File a declaration stating that the application and patent are currently owned by the same party, and that the inventor named in the application is the prior inventor under 35 USC 104.
(D) (A) and (C).
(E) All of the above.
X28. 4.03.p.40. Which of the following is not a proper incorporation by reference in an application prior to allowance according to the USPTO rules and the procedures set forth in the MPEP?
(A) Incorporating material necessary to describe the best mode of the claimed invention by reference to a commonly owned, abandoned U.S. application that is less than 20 years old.
(B) Incorporating non-essential material by reference to a prior filed, commonly owned pending U.S. application.
(C) Incorporating material that is necessary to provide an enabling disclosure of the claimed invention by reference to a U.S. patent.
(D) Incorporating non-essential material by reference to a hyperlink.
(E) Incorporating material indicating the background of the invention by reference to a U.S. patent which incorporates essential material.
X29. 4.03.a.40. In accordance with USPTO rules and the procedure set forth in the MPEP, which one of the following is not required for a provisional application filed in the USPTO?
(A) A specification.
(B) A drawing as prescribed by 35 USC 113.
(C) An application fee.
(D) A claim.
(E) A cover sheet complying with the rule.
X30. 4.03.a.19. Which of the following requests by the registered practitioner of record for an interview with an examiner concerning an application will be granted in accordance with proper USPTO rules and procedure?
(A) A request for an interview in a substitute application prior to the first Office action, for the examiner and attorney of record to meet in the practitioner’s office without the authority of the Commissioner.
(B) A request for an interview in a continued prosecution application prior to the first Office action, to be held in the examiner’s office.
(C) A request for an interview in a non-continuing and non-substitute application, prior to the first Office action to be held in the examiner’s office.
(D) All of the above.
(E) None of the above.
X31. 10.03.p.11. A U.S. patent was granted on May 8, 2001 to five inventors. The five inventors assigned their entire patent rights to Q Company. Q Company needs to file a reissue application to broaden the claims of the patent. The registered practitioner preparing the application has been unable to locate any of the five inventors to sign the reissue oath or declaration. Today is May 8, 2003. Which of the following should the practitioner do to enable the applicant to broaden the patent claims in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) Wait to file the reissue application until the first day the signatures of all five inventors can be obtained. At that time, pay the filing fee and file a petition seeking May 8, 2003 as the filing date. File with the petition a showing of the unavailability of all inventors until the filing of the application.
(B) Wait to file the reissue application until the signatures of at least three inventors can be obtained. At that time, file a petition seeking May 7, 2003 as the filing date accompanied by a showing of the unavailability of all inventors on May 8th. Payment of the filing fees may be postponed until receipt of a decision on the petition.
(C) File the reissue application on May 8, 2003, presenting only the claims in the patent, and include a listing of inventors, but not pay the filing fee at the time of filing.
(D) Wait to file the reissue application until the signature of one of the inventors has been obtained since at least one inventor is needed to show a lack of deceptive intent on the part of the applicants.
(E) File the complete reissue application complying with 37 CFR 1.173(a) and 1.53(b) with an unexecuted reissue declaration listing the names of all the inventors with at least one broadening claim on May 8, 2003.
X32. 4.03.a.39. Applicant received a Final Rejection with a mail date of Tuesday, February 29, 2000. The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on Monday, March 27, 2000. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or amended claim(s). The mail date of the examiner’s Advisory Action is Wednesday, May 31, 2000. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following dates is the last date for filing a Brief on Appeal without an extension of time?
(A) Saturday, May 27, 2000.
(B) Monday, May 29, 2000 (a Federal holiday, Memorial Day).
(C) Tuesday, May 30, 2000.
(D) Wednesday, May 31, 2000.
(E) Tuesday, August 29, 2000.
X33. 4.00.p.38. In accordance with USPTO rules and the procedures set forth in the MPEP, an amendment filed with or after a notice of appeal under 37 CFR 1.191(a), but before jurisdiction has passed to the Board of Patent Appeals and Interferences, should be entered by the primary examiner where the amendment:
(A) requests unofficial consideration by the examiner.
(B) is less than six pages long.
(C) removes issues from appeal.
(D) presents more specific claims, because it is believed that they may have a better chance of being allowable even though the claims do not adopt the examiner’s suggestions.
(E) introduces new issues, allowing the examiner to rethink his position.
X34. 10.03.a.38. Prosecution before the primary examiner results in the rejection of claim 1. Claim 2 was objected to as being allowable except for its dependency from claim 1. Independent claim 3 has been allowed. The rejection of claim 1 is properly appealed to the Board of Patent Appeals and Interferences. The Board properly affirms the rejection of claim 1. Appellant has filed no response to the decision of the Board, the appellant has taken no action, and the time for filing an appeal to the court or a civil action has expired. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following actions is the most appropriate response by the examiner?
(A) The examiner should hold the application abandoned.
(B) The examiner should cancel claim 1, convert dependent claim 2 into independent form by examiner’s amendment, and allow the application.
(C) The examiner should set a 1-month time limit in which appellant may rewrite the dependent claim in independent form.
(D) The examiner should cancel claims 1 and 2 and allow the application with claim 3 only.
(E) None of the above.
X35. 10.03.p.41. A non-final Office action contains, among other things, a restriction requirement between two groups of claims (Group 1 and Group 2). Determine which of the following, if included in a timely reply under 37 CFR 1.111, preserves applicant’s right to petition the Commissioner to review the restriction requirement in accordance with the patent laws, rules and procedures as related in the MPEP.
(A) Applicant’s entire reply to the restriction requirement is: “The examiner erred in distinguishing between Group 1 and Group 2, and therefore the restriction requirement is respectfully traversed and no election is being made, in order that applicant’s right to petition the Commissioner to review the restriction requirement is preserved.”
(B) Applicant’s entire reply to the restriction requirement is: “Applicant elects Group 1 and respectfully traverses the restriction requirement, because the examiner erred in requiring a restriction between Group 1 and Group 2.”
(C) Applicant’s reply distinctly points out detailed reasons why applicant believes the examiner erred in requiring a restriction between Group 1 and Group 2, and additionally sets forth, “Applicant therefore respectfully traverses the restriction requirement and no election is being made, in order that applicant’s right to petition the Commissioner to review the restriction requirement is preserved.”
(D) Applicant’s reply distinctly points out detailed reasons why applicant believes the examiner erred in requiring a restriction between Group 1 and Group 2, and additionally sets forth, “Applicant therefore respectfully traverses the restriction requirement and elects Group 2.
(E) None of the above.
X36. 4.03.a.21. Assuming that any rejection has been properly made final, which of the following statements is not in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) An objection and requirement to delete new matter from the specification is subject to supervisory review by petition under 37 CFR 1.181.
(B) A rejection of claims for lack of support by the specification (new matter) is reviewable by appeal to the Board of Patent Appeals and Interferences.
(C) If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the primary examiner, the new matter issue should be decided by petition, and is not appealable.
(D) If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the examiner, the new matter issue is appealable, and should not be decided by petition.
(E) None of the above.
X37. 4.03.p.19. In connection with the utility of an invention described in a patent application, which of the following conforms to the USPTO rules and the procedure set forth in the MPEP?
(A) A deficiency under 35 USC 101 also creates a deficiency under 35 USC 112, first paragraph.
(B) To overcome a rejection under 35 USC 101, it must be shown that the claimed device is capable of achieving a useful result on all occasions and under all conditions.
(C) A claimed invention is properly rejected under 35 USC 101 as lacking utility if the particular embodiment disclosed in the patent lacks perfection or performs crudely.
(D) To overcome a rejection under 35 USC 101, it is essential to show that the claimed invention accomplishes all its intended functions.
(E) A claimed invention lacks utility if it is not commercially successful.
X38. 10.03.a.11. Application A was filed after November 29, 2000. Reference X and application A were commonly owned at the time the invention of application A was made. In accordance with the patent laws, rules and procedures as related in the MPEP the prior art exclusion of 35 USC 103(c) can be properly invoked to obviate which of the following rejections?
(A) A rejection under 35 USC 102(e) based on reference X, if reference X is prior art only under 35 USC 102(e).
(B) A double patenting rejection based on reference X, if reference X is available as prior art only under 35 USC 102(e).
(C) A rejection under 35 USC 103(a) based on reference X, if references X is available as prior art only under 35 USC 102(e).
(D) (B) and (C).
(E) All of the above.
X39. 10.03.p.13. On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Beck. The application includes a specification and a single claim to the invention which reads as follows:
1. Mixture Y made by the process Q1.
In the specification, Mr. Beck discloses that mixture Y has a melting point of 150° F. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 USC 102/103 as being clearly anticipated by or obvious over Patent A. The examiner states “Patent A teaches mixture Y but made by a different process Q2.” Beck believes he is entitled to a patent to mixture Y. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following would be the best reply to the rejection of his claim?
(A) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(B) An argument that the processes used by applicant and patent A are different, supported by a third-party declaration stating only that the processes are different.
(C) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by a third-party declaration stating only that the products are different.
(D) An argument that the processes used by applicant and patent A are different, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(E) An argument that the claimed product has an unexpectedly low melting point of 150° F because the claimed mixture Y has a melting point of 150° F and the mixture Y of patent A has a melting point of 300° F.
X40. 4.03.A.37. Applicant properly appealed the primary examiner’s final rejection of the claims to the Board of Patent Appeals and Interferences (Board). Claims 1 to 10 were pending in the application. The examiner did not reject the subject matter of claims 7 to 10, but objected to these claims as being dependent on a rejected base claim. Claim 1 was the sole independent claim and the remaining claims, 2 through 10, were either directly or indirectly dependent thereon. After a thorough review of Appellant’s brief and the examiner’s answer, the Board affirmed the rejection of claims 1 to 6. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is the appropriate action for the examiner to take upon return of the application to his jurisdiction when the time for appellant to take further action under 37 CFR 1.197 has expired?
(A) Abandon the application since the Board affirmed the rejection of independent claim 1.
(B) Convert the dependent claims 7 to 10 into independent form by examiner’s amendment, cancel claims 1 to 6, and allow the application.
(C) Mail an Office action to applicant setting a 1-month time limit in which the applicant may rewrite dependent claims 7 to 10 in independent form. If no timely reply is received, the examiner should amend the objected to claims, 7 to 10, and allow the application.
(D) Mail an Office action to applicant with a new rejection of claims 7 to 10 based on the Board’s decision.
(E) No action should be taken by the examiner since the Board affirmed the rejection of independent claim 1, the application was abandoned on the date the Board decision was mailed.
X41. 4.03.p.36. Which of the following is not a policy underlying the public use bar of 35 USC 102(b)?
(A) Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available.
(B) Favoring the prompt and widespread disclosure of inventions.
(C) Allowing the inventor(s) a reasonable amount of time following sales activity to determine the potential economic value of a patent.
(D) Increasing the economic value of a patent by extending the effective term of the patent up to one year.
(E) Prohibiting the inventor(s) from commercially exploiting the invention for a period greater than the statutorily prescribed time.
X42. 10.03.A.36. A registered practitioner filed a patent application in the Office in 1999. Following examination and a final rejection, the practitioner timely filed a proper notice of appeal and a proper appeal brief in the application wherein claims 1-3 stand rejected, claims 4 and 5, which depend on claim 1, stand objected to as depending from a rejected claim but are otherwise allowable, and claims 6-10 stand allowed. The appeal involves claims 1-3. After the brief was filed but prior to a decision by the Board of Patent Appeals and Interferences, the practitioner filed a request for continued examination (RCE) with a submission in accordance with 37 CFR 1.114 without paying the fee set forth in 37 CFR 1.17(e). In accordance with the patent laws, rules and procedures as related in the MPEP, what effect does the filing of the RCE without the fee set forth in Rule 1.17(e) have on the application under appeal?
(A) The application is abandoned.
(B) The application is still pending and under appeal awaiting a decision by the Board of Patent Appeals and Interferences, because the RCE was improper.
(C) The application is still pending; the appeal is considered withdrawn and the application will be passed to issue with claims 1-3 canceled and claims 4-10 allowed.
(D) The application is still pending; the appeal is considered withdrawn and the application will be passed to issue with claims 1-5 canceled and claims 6-10 allowed.
(E) The appeal is withdrawn; the application is returned to the primary examiner and prosecution is reopened as to claims 1-10.
X43. 10.03.p.40. Applicant files a patent application in Japan on January 5, 2000. Applicant files a PCT international application designating the United States on January 5, 2001, based on the Japanese application. The international application is published in English on July 5, 2001. The international application enters the national stage in the United States on September 5, 2001. The USPTO publishes the application on June 6, 2002. The application issues as a United States patent on December 3, 2002. What is its earliest possible 35 USC 102(e) prior art date for the application published by the United States, in view of the amendment to Title 35 by the American Inventors Protection Act of 1999 and the Intellectual Property and High Technology Technical Amendments Act of 2002?
(A) January 5, 2000.
(B) January 5, 2001.
(C) July 5, 2001.
(D) June 6, 2002.
(E) December 3, 2002.
X44. 10.03.a.12. Inventors B and C are employed by Corporation D, which authorized registered practitioner E to prepare and file a patent application claiming subject matter invented by B and C. Inventor B signed the oath, an assignment to Corporation D, and a power of attorney authorizing practitioner E to prosecute the application. Inventor C refused to sign the oath and any assignment documents for the application. The employment contract between inventor C and Corporation D contains no language obligating C to assign any invention to Corporation D. A patent application was properly filed in the USPTO under 37 CFR 1.47 naming B and C as inventors, but without inventor C signing the oath. C has now started his own company competing with Corporation D producing a product with the invention in the application. Inventor B is a friend of inventor C and wants C to have continued access to the application. Which of the following statements is in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) Inventor C, who has not signed the oath or declaration, may revoke the power of attorney to practitioner E and appoint practitioner F to prosecute the application.
(B) Inventor C cannot be excluded from access t the application because inventor B has not agreed to exclude inventor C. In order to exclude a co-inventor from access to an application, all the remaining inventors must agree to exclude that coinventor.
(C) Inasmuch as one of the named joint inventors has not assigned his or her rights to Corporation D, the corporation is not an assignee of the entire right and interest, and therefore cannot exclude inventor C from access to the application.
(D) An inventor who did not sign the oath or declaration filed in an application can always be excluded from access to an application.
(E) An assignee filing an application can control access to an application and exclude inventors who have not assigned their rights and other assignees from inspecting the application.
X45. 10.03.p.15. Applicant filed an international patent application under the Patent Cooperation Treaty (PCT) designating the United States. A copy of the international application has not been submitted to the USPTO by the International Bureau. The deadline for entering the national stage under 35 USC 371(c) was August 15, 2002. Applicant submitted all of the national stage items required by 35 USC 371(c) by facsimile transmission on August 15, 2002. The facsimile transmission was successfully received by the USPTO on August 15, 2002. The submission included an authorization to charge any required fees to the valid deposit account of the registered practitioner representing applicant. The account contained sufficient funds. Assuming that applicant has made no other national stage submissions under 35 USC 371(c), which of the following statements is most correctly describes why the national stage submission in accordance with the patent laws, rules and the procedures as related in the MPEP is proper or improper?
(A) The national stage submission was proper because facsimile transmission is a valid method of correspondence in the USPTO.
(B) The national stage submission was proper because a copy of an originally executed oath or declaration is acceptable, but the original oath or declaration should be retained as evidence of authenticity.
(C) The national stage submission was improper because a copy of the international application and the basic national fee necessary to enter the national stage as required by 35 USC 371(c) may not be submitted by facsimile transmission.
(D) The national stage submission was improper because the USPTO does not accept fee payments via facsimile transmission.
(E) The national stage submission was improper because facsimile transmission may never be used for PCT applications.
X46. 4.03.a.36. Mike and Alice, who are not related, are shipwrecked on a heretofore uninhabited and undiscovered island in the middle of the Atlantic Ocean. In order to signal for help, Mike invents a signaling device using bamboo shoots. Alice witnesses but does not assist in any way in the development of the invention. The signaling device works and a helicopter comes and rescues Alice. However, Mike remains on the island due to overcrowding on the helicopter. Unfavorable weather conditions have prevented Mike’s rescue to date. Alice comes to you, a registered patent practitioner, to file an application for a patent and offers to pay you in advance. Which of the following, in accordance with the USPTO rules and the procedures set forth in the MPEP, is true?
(A) Since Mike invented the invention, Alice cannot properly file an application for a patent in her name even though Mike is unavailable.
(B) Since Mike is unavailable, you may properly file an application for a patent without his consent. You can accept the money from Alice as payment for the application.
(C) Since Mike is not available and cannot be reached, Alice may properly sign the declaration on his behalf since she has witnessed the invention and knows how to make and use it.
(D) Alice should file an application in her name since she has witnessed the invention and knows how to make and use it. Subsequently, when Mike becomes available, the inventorship may be changed to the correct inventorship.
(E) Even though Mike and Alice are not related, Alice may properly file an application on Mike’s behalf.
X47. 10.03.p.39. An international application is filed in the United States Receiving Office on September 18, 2002. In accordance with the PCT and USPTO rules and the procedures set forth in the MPEP, which of the following will result in the application not being accorded an international filing date of September 18, 2002?
(A) The description and claims are in German.
(B) The Request is signed by a registered attorney rather than the applicant.
(C) The sole applicant is a Canadian resident and national.
D) The application does not contain a claim.
(E) The application is not accompanied by any fees.
X48. 4.03.a.23. Which of the following is not prohibited conduct for a practitioner under the USPTO Code of Professional Responsibility?
(A) Entering into an agreement with the client to limit the amount of any damages which the client may collect for any mistakes the practitioner may make during prosecution of the client’s patent application in exchange for prosecuting the application at a reduced fee.
(B) Encouraging the client to meet with an opposing party for settlement discussions.
(C) Failing to disclose controlling legal authority which is adverse to the practitioner’s client’s interest when arguing the patentability of claims in a patent application.
(D) In reply to an Office action, stating honestly and truthfully in the remarks accompanying an amendment that the practitioner has personally used the device and found it to be very efficient and better than the prior art.
(E) Investing the funds the client advanced for the practitioner legal fees (not costs and expenses) in long term United States Treasury Bills in order to obtain guaranteed protection of the principal.
X49. 4.03.p.13. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following fees may not be reduced by 50 percent for “small entities”?
(A) The basic filing fee for a design patent application.
(B) The fee for a disclaimer.
(C) The fee for a petition for an extension of time.
(D) The fee for recording a document affecting title.
(E) The maintenance fee due at 3 years and six months after grant.
X50. 10.03.p.16. Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP?
(1) In a 35 USC 103 obviousness analysis, the proper question is whether the differences between the prior art and the claims would have been obvious to one of ordinary skill in the art.
(2) In a 35 USC 103 obviousness analysis, an inventor’s assertion the he has discovered the source or cause of an identified problem should never be considered.
(3) A 35 USC 103 obviousness analysis requires consideration not just of what is literally recited in the claims, but also of any properties inherent in the claimed subject matter that are disclosed in the specification.
(A) Statement 1
(B) Statement 2
(C) Statement 3
(D) Statements 1 & 2
(E) Statements 1 & 3
Test X Answers
1.C 22.C 43.B
2.A 23.A 44.C
3.B 24.E 45.C
4.C 25.E 46.A
5.E 26.C 47.D
6.D 27.ALL* 48.B
7.E 28.D 49.D
8.B 29.D 50.C
9.C 30.B
10.E 31.E
11.C 32.D
12.B 33.C
13.C 34.D
14.D 35.D
15.E 36.C
16.C 37.A
17.D 38.C
18.B 39.A
19.A 40.A
20.E 41.D
21.E 42.D
First half of Test Y:
X27 – Credit given for all Answers . For better understanding of a problem like this:
706.02(b) states:
A rejection based on 35 U.S.C. 102(e) can be overcome by:
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP § 715.01(a), § 715.01(c), and § 716.10;
(D) Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming the same patentable invention as defined in 37 CFR 41.203(a). See MPEP § 715 for more information on 37 CFR 1.131 affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131 is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP § 804. If there is no common assignee or inventor and the rejection under 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences;
(E) Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55(a)(1) or filing a grantable petition under 37 CFR 1.55(c). See MPEP § 201.13. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(a)(3)) and the examiner has established that the priority document satisfies the enablement and description requirements of 35 U.S.C. 112, first paragraph; or
(F) Perfecting benefit under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78(a) or filing a grantable petition under 37 CFR 1.78(a), by amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78(a), and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112, first paragraph. See MPEP § 201.11 and § 706.02.
Y1. 4.03.a.33. A claim in a pending patent application for an electric toothbrush is rejected under 35 USC 102 as being anticipated by a U.S. Patent, which was issued to Lancer, the soel name inventor, for a similar electric toothbrush. The Lancer patent was issue one day before the filing date of the application in question. The claim in the pending application contains a limitation specifying the location of an on/off switch. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?
(A) The Lancer patent discloses and claims an electric toothbrush, but does not mention whether its toothbrush includes a power supply.
(B) Evidence is submitted to show the electric toothbrush claimed in the application is commercially successful.
(C) The Lancer patent teaches away from the bristles of the claimed toothbrush.
(D) Lancer is one of three named inventors of the claimed toothbrush in the pending application.
(E) The on/off switch in the Lancer patent is on a different side of the body than that recited in the claim for the electric toothbrush in the patent application.
Y2. 10.03.a.33. Which of the following phrases taken from an independent claim has an antecedent basis problem according to the patent laws, rules and the procedures as related in the MPEP?
(A) “the center of the circle having …,” where the claim does not previously recite that the circle has a “center.”
(B) “the major diameter of the ellipse being …,” where the claim does not previously recite that the ellipse has a “major diameter.”
(C) “the outer surface of the sphere being …,” where the claim does not previously recite that the sphere has an “outer surface.”
(D) “the lever of the machine being located …,” where the claim does not previously recite a “lever.”
(E) “the area of the rectangle being …,” where the claim does not previously define an “area.”
Y3. 4.03.p.11. A registered practitioner properly recorded an assignment document for application A identifying XYZ Company as the assignee. The document assigns to XYZ Company the “subject matter claimed in Application A.” A proper restriction requirement was made by a primary examiner in application A between two distinct inventions, and the practitioner elected to prosecute one of the inventions. Application A was prosecuted, and later became abandoned. Before the abandonment date of application A, the practitioner filed a complete application B as a proper divisional application of application A. Application B claimed the nonelected invention of Application A, and was published as a U.S. application publication. XYZ Company remains the assignee of application A. What must the practitioner do in accordance with the USPTO rules and the procedures set forth in the MPEP to ensure that XYZ Company is listed as the assignee on the face of any patent issuing from application B?
(A) File a proper assignment document in application B identifying XYZ Company as the assignee.
(B) File a proper assignment document in application B identifying XYZ Company as the assignee, and confirm that USPTO’s bibliographic data for application B identifies XYZ Company as the assignee by checking the filing receipt for application B, the U.S. application publication of application B, or the USPTO’s Patent Application Information Retrieval (PAIR) system data for application B, depending on when the practitioner filed the assignment document in application B.
(C) Confirm that XYZ Company is identified as the assignee on the U.S. application publication of application B.
(D) File a proper assignment document in application B identifying XYZ Company as the assignee, and confirm that XYZ Company is identified as the assignee on the U.S. application publication of application B.
(E) Upon allowance of application B, the practitioner must identify XYZ Company as the assignee in the appropriate space on the Issue Fee Transmittal form for specifying the assignee for application B.
Y4. 4.03.a.25. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a proper basis on which the Board of Patent Appeals and Interferences may remand a case to the examiner?
(A) Remand for a fuller description of the claimed invention.
(B) Remand for a clearer explanation of the pertinence of the references.
(C) Remand for a selection by the primary examiner of a preferred or best ground of rejection when multiple rejections of a cumulative nature have been made by the examiner.
(D) Remand to the primary examiner with instructions to consider an affidavit not entered by the examiner which was filed after the final rejection but before the appeal.
(E) Remand to the primary examiner to prepare a supplemental examiner’s answer in response to a reply brief.
Y5. 10.03.a.14. The specification of a patent application contains limited disclosure of using antisense technology in regulating three particular genes in E. coli cells. The specification contains three examples, each applying antisense technology to regulating one of the three particular genes in E. coli cells. Despite the limited disclosure, the specification states that the “the practices of this invention are generally applicable with respect to any organism containing genetic material capable of being expressed such as bacteria, yeast, and other cellular organisms.” All of the original claims in the application are broadly directed to the application of antisense technology to any cell. No claim is directed to applying antisense technology to regulating any of the three particular genes in E. coli cells. The claims are rejected under 35 USC 112, first paragraph, for lack of enablement. In support of the rejection, a publication is cited that correctly notes antisense technology is highly unpredictable, requiring experimentation to ascertain whether the technology works in each type of cell. The publication cites the inventor’s own articles (published after the application was filed) that include examples of the inventor’s own failures to control the expressions of other genes in E. coli and other types of cells. In accordance with the patent laws, rules and procedures as related in the MPEP, the rejection is:
(A) appropriate because the claims are not commensurate in scope with the breadth of enablement inasmuch as the working examples in the application are narrow compared to the wide breadth of the claims, the unpredictability of the technology, the high quantity of experimentation needed to practice the technology in cells other than E. coli.
(B) appropriate because the claims are not commensurate in scope with the breadth of the enablement inasmuch no information is provided proving the technology is safe when applied to animal consumption.
(C) inappropriate because the claims are commensurate in scope with the breadth of enablement inasmuch as the specification discloses that the “the practices of this invention are generally applicable with respect to any organism containing genetic material capable of being expressed.”
(D) inappropriate because the claims are commensurate in scope with the breadth of enablement inasmuch as the claims are original, and therefore are self-supporting.
(E) inappropriate because the claims are commensurate in scope with the breadth of the enablement inasmuch as the inventor is not required to theorize or explain why the failures reported in the article occurred.
Y6. 10.03.p.17. A patent application was filed on November 1, 2000 for the invention of J.J. Smithy. The application has no priority or benefit claims to any other application. Claims in the application are separately rejected under 35 USC 102 as being anticipated by each of the following references. Which reference can be properly applied under 35 U.S.C. 102(e) in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) A WIPO publication of an international application under PCT Article 21(2), which has an international filing date of October 3, 2000, was published in English and designated the United States.
(B) A U.S. patent by J.J. Smithy that has a filing date of September 5, 2000.
(C) A U.S. application publication under 35 U.S.C. 122(b) by inventor Jones that was filed on August 8, 2000.
(D) A journal article by Marks published on October 11, 2000.
(E) All of the above.
Y7. 4.03.a.30. A patent application includes the following Claim 1:
Claim 1. A method of making an electrical device comprising the steps of:
(i) heating a base made of carbon to a first temperature in the range of 1875°C to 1925°C;
(ii) passing a first gas over said heated base, said first gas comprising a mixture of hydrogen, SiCl4, phosphorus, and methane, whereby said first gas decomposes over said heated base and thereby forms a first deposited layer of silicon, phosphorus and carbon on said heated base;
(iii) heating said base having said deposited layer to a second temperature of approximately 1620°C; and
(iv) passing a second gas over said base heated to said second temperature, said second gas consisting of a mixture of hydrogen, SiCl4, AlCl3, and methane, whereby said second gas decomposes over said heated base to form a second deposit layer adjacent said first layer, said second layer comprising silicon, aluminum and carbon.
Assuming proper support in the specification, which of the following claims, if presented in the same application, is a proper claim in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) Claim 2. The method of claim 1, wherein said first temperature is in the range of 1800°C to 2000°C.
(B) Claim 3. The method of claim 1, wherein said first gas further comprises an inert gas.
(C) Claim 4. The method of claim 1, wherein said second gas further comprises Argon.
(D) Claim 5. The method of claim 1, wherein said first gas is an inert gas such as Argon.
(E) Claim 6. The method of claim 1, wherein said second gas consists of a mixture of hydrogen, SiCl4 and AlCl3 only.
Y8. 4.03.p.23. The claims in a patent application having been twice or finally rejected, the applicant files a timely Notice of Appeal on January 2, 2003. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following situations should the USPTO not notify the applicant that the Appeal Brief is defective and allow him an opportunity to correct the deficiency?
(A) The Appeal Brief is filed on July 10, 2003, without a request for extension of time under 37 CFR 1.136.
(B) The Appeal Brief is submitted unsigned.
(C) The Appeal Brief states that the claims do not stand or fall together, and presents argument as to why the claims are separately patentable, but the primary examiner does not agree with the applicant’s argument.
(D) The Appeal Brief does not state whether the claims stand or fall together, but presents arguments why the claims subject to the same rejection are separately patentable.
(E) The Appeal Brief does not address one of the grounds of rejection stated by the primary examiner.
Y9. 10.03.a.32. With respect to the examiner’s burden in making an enablement rejection under 35 USC 112, first paragraph, which of the following statements is or are in accordance with the patent laws, rules and procedures as related in the MPEP?
(1) The examiner may properly make an enablement rejection before construing the claims.
(2) The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention.
(3) The examiner need not give reasons for the uncertainty of the enablement when there is no evidence of operability beyond the disclosed embodiments.
(A) Statement (1) only
(B) Statement (2) only
(C) Statement (3) only
(D) Statements (1) and (2)
(E) Statements (1) and (3)
Y10. 10.03.p.37. The specification of an application does not disclose the utility of the claimed composition. In fact, the claimed invention is useful for shrinking a specific class of tumors. In a first Office action, the primary examiner has properly determined that the claims lack utility, and has rejected all of the composition claims under the first paragraph of 35 USC 112 as lacking utility. Which of the following responses is in accord with the USPTO rules and the procedures of the MPEP for persuading the examiner that the rejection is improper?
(A) Explain that the rejection is statutorily improper because the first paragraph of section 112 is concerned with enablement and written description issues and therefore does not support a rejection for lack of utility.
(B) Point out that the rejection is based on an erroneous finding by the examiner because the specification, in fact, clearly discloses that the composition in question possesses “useful biological” properties.
(C) Show that the rejection is improper by filing probative evidence that the claimed composition has unambiguously proven to be useful for shrinking a specific class of tumors.
(D) File declarations by persons with ordinary skill in the art stating that they would immediately appreciate that the claimed composition is useful for shrinking a specific class of tumors due to the fact that similar compositions having the same characteristics as applicant’s claimed composition were known to be effective for this purpose.
(E) Argue that the rejection is improper because the examiner has failed to present evidence in support of his position that the claimed composition has no utility.
Y11. 10.03.a.15. A utility application filed in May 2001 has been prosecuted through a second action final rejection. In the final rejection some claims were allowed and other claims were finally rejected. Which of the following accords with the patent laws, rules and the procedures as related in the MPEP for a proper reply to a second action final rejection in the utility application?
(A) An amendment canceling all rejected claims and complying with 37 CFR 1.116.
(B) Only a Notice of Appeal.
(C) The appropriate fee for a request for continued examination (RCE).
(D) A continued prosecution application (CPA) under 37 CFR 1.53(d).
(E) All of the above.
Y12. 10.03.p.18. A registered practitioner filed a design patent application on December 30, 2003. The application was filed with an inventor-executed declaration naming Jon Jones as the sole inventor, who has not assigned the invention and is not under an obligation to assign his invention. The filing receipt was recently received, indicating that the application will be published on Thursday, July 1, 2004. In reviewing the filing receipt the practitioner realizes that the typed name of the inventor contained a typographical error (an “h” was missing) and that the correct spelling was John Jones. Which of the following would be the course of action at the least expense to correct the error in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The practitioner should file a request under 37 CFR 1.48 to correct the inventorship of the application with a new declaration under 37 CFR 1.63 signed by John Jones (with the correct spelling of this name), a statement by Mr. Jones as to how the error occurred and that the error was without deceptive intention, and the processing fee set forth in 37 CFR 1.17(q).
(B) The practitioner should file a petition under 37 CFR 1.182 and the petition fee set forth in 37 CFR 1.17(h), requesting correction of the spelling of the inventor’s name.
(C) The practitioner should file a request for a corrected filing receipt and a separate letter to the Office explaining that the declaration contains a typographical error, that the correct spelling of the inventor’s name is John Jones, and requesting correction of the Office records.
(D) The practitioner should expressly abandon the application, and file a continuation with a new declaration with the correct spelling.
(E) The practitioner should call the examiner and tell the examiner that the inventor’s name is wrong, and ask for the examiner to change the name on the declaration.
Y13. 4.03.a.31. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following documents, if any, must also contain a separate verification statement?
(A) Small entity statements.
(B) A petition to make an application special.
(C) A claim for foreign priority.
(D) An English translation of a non-English language document.
(E) None of the above.
Y14. 10.03.a.31. Reexamination has been ordered following receipt of a request for reexamination of U.S. Patent X, filed by the patentee. Patent X contains independent claims 1 through 4, each directed to a hydrocyclone separator apparatus. They are the only claims that were ever presented during prosecution of the application that matured into Patent X. In the first Office action during reexamination, claims 1 through 4 are rejected as being obvious under 35 USC 103 over U.S. Patent Z. The apparatus is used for separating material, including fibers suspended in a liquid suspension, into a light fraction containing the fibers, and a heavy fraction containing rejects. Assume there are no issues under 35 USC 102, 103, or 112, and that any dependent claim is properly dependent. Recommend which of the following claims, if any, would be subject to rejection under 35 USC 305 for improperly enlarging the scope of the original claim in accordance with the patent laws, rules and procedures as related in the MPEP.
(A) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein said blades are configured in the form of generally plane surfaces curved in one plane only.
(B) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein the outlet duct is in the form of two frustro-conical portions joined at their narrow ends.
(C) Claim 5. A method of separating material including fibers suspended in a liquid suspension comprising the steps of separating the material into a light fraction containing the fibers and a heavy fraction containing rejects, and converting the light fraction into a pulp and paper stock suspension.
(D) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein the separator chamber is conical in shape having at the narrow end an outlet for the heavy fraction and at its wide end an outlet for the light fraction.
(E) None of the above.
Y15. 10.03.p.36. An application naming X and Y as joint inventors, filed on April 3, 2002, has a single pending claim, and does not claim the benefit of any earlier application. Which, if any, of the following items of prior art that have been relied on in various rejections of the claim may be overcome by a suitable affidavit under 37 CFR 1.131 in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) A U.S. patent to G that issued on March 27, 2001, has an effective U.S. filing date of January 4, 2000, and does not claim the “same patentable invention” (as defined in 37 CFR 1.601(n)) as the rejected claim.
(B) A U.S. patent to P that issued on June 5, 2001, has an effective U.S. filing date of February 1, 2000, and includes a claim that is identical to the rejected claim.
(C) A journal article to H published on December 10, 2001, and characterized in the application as “describ[ing] the prior art.”
(D) A foreign patent issued to X and Y on November 7, 2001, which claims the same
subject matter as the rejected claim and is based on an application filed on January 3, 2001.
(E) None of the above.
Y16. 4.03.a.29. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following papers is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8?
(A) An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country.
(B) An amendment, replying to an Office action setting a period for reply, transmitted by facsimile with a certificate of transmission to the USPTO from a foreign country.
(C) An information disclosure statement (IDS) under 37 CFR 1.97 and 1.98 transmitted after the first Office action.
(D) A request for continued examination (RCE) under 37 CFR 1.114.
(E) An appeal brief.
Y17. 10.03.a.16. Tribell files a patent application for her aroma therapy kit on November 29, 1999, which issues as a patent August 7, 2001. She tries to market her kit but all her prospects are concerned that her patent claims are not sufficiently broad. On September 5, 2001, Tribell asks a registered practitioner for advice on what to do to improve her ability to market her aroma therapy kit. At the consultation the practitioner learns that in the original patent application, Tribell had a number of claims which were subjected to a restriction requirement, but were nonelected and withdrawn from further consideration. The practitioner also determines that the claims in the patent obtained by Tribell were narrower than the broader invention disclosed in the specification, and the cited references may not preclude patentability of the broader invention. Which of the following is the best course of action to pursue in accordance with the patent laws, rules and procedures as related to the MPEP?
(A) Tribell should file a reissue application under 35 USC 251 within two years of the issue of the patent, broadening the scope of the claims of the issued patent.
(B) Tribell should file a reissue application under 35 USC 251 any time during the period of enforceability of the patent to broaden the scope of the claims of the issued patent, and then file a divisional reissue application of the first reissue application on the nonelected claims that were subjected to a restriction requirement in the nonprovisional application which issued as a patent.
(C) Tribell should simultaneously file two separate reissue applications under 35 USC 251, one including an amendment of broadening the claims in the original patent, and the other including the nonelected claims that were subjected to a restriction in the nonprovisional application which issue as a patent.
(D) Tribell should immediately file a divisional application under 37 CFR 1.53(b) including the nonelected claims that were subjected to a restriction requirement in the original application.
(E) Tribell should immediately file a reissue application under 35 USC 251, including the nonelected claims that were subjected to a restriction requirement in the original application.
Y18. 10.03.p.19. The claims in an application are rejected under 35 USC 103 as obvious over prior art reference A in view of prior art reference B. All of the following statements are in accord with the patent laws, rules and procedures as related in the MPEP except:
(A) Where the combination of prior art references provides motivation to make the claimed invention to achieve the same advantage or result discovered by the applicant, the references do not have to expressly suggest the combination of references.
(B) The rationale to modify or combine the prior art references may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law.
(C) In considering the disclosure of the prior art references, it is proper to take into account the specific teachings of the references, as well as the inferences that one skilled in the art could reasonably draw from the specific teachings.
(D) An examiner may take official notice of facts outside the record that are capable of instant and unquestionable demonstration as being “well known” prior art or common knowledge in the art.
(E) To rely on equivalence as a rationale supporting an obviousness rejection under 35 USC 103 an examiner may base the rejection on the mere fact that the components at issue are functional or mechanical equivalents.
Y19. 10.03.a.17. Inventor files an application containing the following original Claim 1:
1. A widget comprising element A, and element B.
In a first Office action on the merits, a primary examiner rejects claim 1 under 35 USC 103 as being obvious over reference X. Reference X explicitly discloses a widget having element A, but it does not disclose element B. The examiner, however, takes official notice of the fact that element B is commonly associated with element A in the art and on that basis concludes that it would have been obvious to provide element B in the reference X widget. In reply to the Office action, the registered practitioner representing the applicant makes no amendments, but instead requests reconsideration of the rejection by demanding that examiner show proof that element B is commonly associated with element A in the art. Which of the following actions, if taken by the examiner in the next Office action would be in accord with the patent laws, rules and procedures as related in the MPEP?
I. Vacate the rejection and allow the claim.
II. Cite a reference that teaches element B is commonly associated with element A in the art and make the rejection final.
III. Deny entry of applicant’s request for reconsideration on the ground that it is not responsive to the rejection and allow applicant time to submit a responsive amendment.
(A) I and II only.
(B) II only.
(C) II and III only.
(D) I, II, and III.
(E) I and III only.
Y20. 10.03.a.19. In accordance with patent laws, rules and procedures as related in the MPEP, a rejection under 35 USC 102 can be overcome by demonstrating:
(A) the reference is nonanalogous art.
(B) the reference teaches away from the claimed invention.
(C) the reference disparages the claimed invention.
(D) (A), (B) and (C).
(E) None of the above.
Y21. 10.03.a.20. On January 3, 2003, a registered practitioner filed a continuation application that includes a benefit claim to a prior-filed application. The practitioner simultaneously filed in the prior filed application an express abandonment in favor of a continuing application. The prior application contained five drawing figures described in the specification. However, the continuation application contains only four of the five drawing figures. The specification of the continuation application did not include a complete description of the missing drawing figure. A postcard from the USPTO, listing the contents of the continuation application, contains a note that only four drawing figures were received. The practitioner inadvertently omitted one of the drawing figures mentioned in the specification when he filed the continuation application. The missing drawing figure shows a claimed feature of the invention. On February 10, 2003, the practitioner received a Notice of Omitted Item(s) properly according a filing date of January 3, 2003 for the continuation application without the missing drawing figure and notifying the applicant that the drawing is missing. Which of the following procedures for filing the missing drawing would comply with the patent laws, rules and procedures as related in the MPEP for according the continuation application a January 3, 2003 filing date with the five drawing figures that were present in the application?
(A) The practitioner files the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
(B) The practitioner files the missing drawing figure and an amendment to the specification to add a complete description of the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
(C) The practitioner files an amendment to cancel the description of the missing drawing figure from the specification of the continuation application.
(D) If the continuation application as originally filed includes an incorporation by reference of the prior-filed application to which the benefit is claimed, the practitioner can file the missing drawing figure any time prior to the first Office action.
(E) The practitioner files the missing drawing figure accompanied by a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(h) only alleging that the drawing figure indicated as omitted was in fact deposited with the USPTO with the application papers.
M5 – You have surpassed yourself here. Thanks a Million!
JP
Last half of Test Y. Notice it does not have 50 questions – room for future expansion by contribution of new test repeats?
Y22. 10.08.a.21. Patent application A was filed on January 12, 1995, containing claims 1-10. A primary examiner rejects the claims under 35 USC 102(b) as being anticipated by a U.S. patent issued on June 2, 1992. The rejection also relies on a technical paper published March 12, 1993 to show that a characteristic is inherent in the patent, although not expressed in its disclosure. According to the patent laws, rules and procedures as related in the MPEP, which of the following actions is most likely to overcome the rejection?
(A) Filing a declaration and exhibits under 37 CFR 1.131 to antedate the reference U.S. patent.
(B) Filing evidence under 37 CFR 1.132 tending to show commercial success of the invention.
(C) Filing evidence under 37 CFR 1.132 tending to show unexpected results of the invention.
(D) Amending the specification of application A to claim priority under 35 USC 120 by a specific reference to a prior copending application B that was filed before June 2, 1992 by the same inventor and discloses the invention claimed in at least one claim of application A in the manner provided by the first paragraph of 35 USC 112.
(E) Submitting arguments pointing out that the rejection under 35 USC 102(b) relies on more than one reference.
Y23. 10.03.a.22. Application Number A was published as U.S. Patent Application Publication Number B. A member of the public reviewed the listing of the file contents of the application on the Patent Application Information Retrieval system and determined that the application was still pending, that a final Office action was mailed, and that the application file is in the Technology Center where it is being examined. The member of the public does not have a power to inspect, but would like a copy of the final Office action as well as the other papers in the patent application. In accordance with the patent laws, rules and procedures as related in the MPEP, can a copy of these papers be obtained by the member of the public, and if so, how can the copy be obtained?
(A) No, a copy cannot be obtained because patent applications are maintained in confidence pursuant to 35 USC 122(a).
(B) No, a copy cannot be obtained because the patent application is still pending.
(C) Yes, a member of the public can go to the Technology Center and ask for the file for copying at a public photocopier.
(D) Yes, the member of the public can complete a “Request for Access to an Application Under 37 CFR 1.14(e)” and, without payment of a fee, order the file from the File Information Unit. Upon the Unit’s receipt of the application, the member of the public can use a public photocopier to make a copy.
(E) Yes, the member of the public can order a copy from the Office of Public Records, with a written request and payment of the appropriate fee.
Y24. 10.03.a.23. Applicant files a claim which includes the following limitation: “a step for crossing the road.” The specification recites the following acts: “(1) go to the curb, (2) look both ways, (3) if the road appears safe, walk across the road, (4) step up onto the far curb, (5) continue walking.” The primary examiner properly construes the step limitation to cover the foregoing acts. A prior art reference, published two years before the application was filed, expressly describes acts (1)-(4), but not (5). This same reference also discloses the remaining limitations recited in applicant’s claim, i.e., those other than the step plus function limitation. The examiner rejects the claim under 35 USC 102(b) as being anticipated by the prior art reference. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is the most complete reply to overcome the rejection under these circumstances?
(A) An argument explaining that since act (5) is not disclosed in the reference, it does not anticipate the claim.
(B) An amendment to the specification deleting act (5) – continue walking.
(C) An argument showing that neither the equivalent of act (5) nor act (5) is disclosed in the reference, which therefore does not anticipate the claim.
(D) An amendment to the claim by adding a negative limitation to expressly exclude act (5) from crossing the road.
(E) (B) and (D)
Y25. 10.03.a.24. A registered practitioner filed an application for an applicant claiming a “a means for pulling the door open.” The specification describes a handle and a knob being used together as a corresponding structure for pulling the door open. A prior art patent discloses a door opened by pulling on an attached bar. The primary examiner issued an Office action rejecting the claim under 35 USC 102 as being anticipated. In the action, the examiner properly identified the corresponding structure described in the applicant’s specification as the means for pulling the door open and properly explained why the prior art attached bar is the equivalent of the structure described in applicant’s specification. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is the most correct reply to overcome the rejection under these circumstances?
(A) An amendment to the claim changing the pulling means to expressly include an attached bar.
(B) Only arguer that the claimed pulling means is not found in the prior art relied-upon reference and therefore the claim is patentable.
(C) An amendment to the specification that adds an attached bar to correspond to the prior art.
(D) An amendment to the claim substituting for the term “means for pulling the door open” the structure of a handle and a knob.
(E) An amendment to the specification that excludes an attached bar as a pulling means.
Y26. 10.03.a.26. When, in accordance with the patent laws, rules and procedures as related in the MPEP, is a supplemental oath or declaration treated as an amendment under 37 CFR 1.312?
(A) When filed in a nonprovisional application after the Notice of Allowance has been mailed.
(B) When filed in a reissue application at any point during the prosecution.
(C) When filed in a nonprovisional application after the payment of the Issue Fee.
(D) When filed in a reissue application after the Notice of Allowance has been mailed.
(E) (A) and (D).
Y27. 10.03.a.28. A registered practitioner files a patent application with the following claim:
1. A plastic insert for the bottom of a shopping cart comprising circular receptacles to receive wine bottles and to maintain them in an upright and stable position even while the shopping cart is moved about a store so that they do not fall and break.
Patent A discloses a plastic insert for the bottom of a shopping cart comprising rectangular receptacles to receive cereal boxes and to maintain them in an upright and stable position even while the shopping cart is moved about a store in order to keep them organized in the cart. Patent A also discloses that the receptacles could be any circular diameter to receive complementary shaped bottles or jars such as to securely hold 2-liter soft drink bottles or mayonnaise jars. A primary examiner rejected the claim as being obvious under 35 USC 103 over Patent A reasoning that Patent A suggests to one of ordinary skill in the art an insert for a shopping cart with circular receptacles for the purpose of stably maintaining any bottle, including wine bottles, while pushing the cart about a store so that the cart remains organized. Assume the examiner has made a sufficient prima facie case of obviousness. Following receipt of the rejection, the practitioner filed a timely reply. The practitioner argued that Patent A does not render obvious the claimed subject matter because there is no suggestion of a plastic insert to keep a wine bottle from falling and breaking in a shopping cart. Which of the following best explains why, in accordance with the patent laws, rules and the procedures as related in the MPEP, the examiner should or should not be persuaded by the practitioner’s argument?
(A) No, because Patent A suggests circular receptacles for any complementary bottle, albeit for a different purpose.
(B) Yes, because there is no suggestion in Patent A that the plastic insert can hold a wine bottle.
(C) Yes, because the claim uses the insert to keep the bottles from falling and breaking while Patent A uses the insert to keep the cart organized.
(D) Yes, because Patent A is more interested in organizing boxes than holding bottles.
(E) Yes, because the prevention from breakage is an unexpected property of the plastic insert.
Y28. 10.03.a.29. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding publications as references is incorrect?
(A) A doctoral thesis indexed and shelved in a library can be sufficiently accessible to the public to constitute prior art as a printed publication.
(B) Evidence showing routine business practices is never sufficient to establish the date on which a publication became accessible to the public.
(C) A paper which is orally presented in a forum open to all interested persons can constitute a “printed publication” if written copies are disseminated without restriction.
(D) Documents distributed only internally within an organization, which has an existing policy of confidentiality or agreement to remain confidential are not “printed publications” even if many copies are distributed.
(E) A publication disseminated by mail is not available as prior art until it is received by at least one member of the public.
Y29. 10.03.a.30. A registered practitioner receives an Office action for Application X, a patent application filed after November 29, 1999. The action contains a rejection of all the claims as being obvious under 35 USC 103(a) over Patent A in view of Patent B. Patent A is only available as prior art under 35 USC 102(e). Patent B is available under 35 USC 102(b). The practitioner seeks to disqualify Patent A as prior art under 35 USC 103(c). Which of the following would be sufficient evidence to disqualify Patent A as prior art in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) A declaration signed by an employee of Corporation K, who is not empowered to act on behalf of Corporation K, stating that at the time the invention claimed in Application X was made, the claimed invention and Patent A were commonly owned by Corporation K.
(B) A declaration signed by the inventor of Patent A stating that at the time the invention claimed in Application X was made, the invention claimed in Application X and the invention claimed in Patent A were both subject to an obligation of assignment to the same person.
(C) A statement by the inventor Jones, the sole inventor of Application X, saying that at the present time, Application X and Patent A are commonly owned.
(D) A statement by the practitioner stating that Application X and Patent A were, at the time the invention claimed in Application X was made, commonly owned by the same person.
(E) A statement by inventor Jones, the sole inventor of Application X, saying that at the time the invention claimed in Application X was made, Jones owned a majority interest in Patent A.
Y30. 10.03.p.20. Recommend which of the following rejections under 35 USC 102 in a reexamination proceeding is in accordance with the patent laws, rules and procedures as related in the MPEP.
(A) A rejection under 35 USC 102(a) based on an affidavit that the invention was known or used by others before the invention thereof by the applicant for patent.
(B) A rejection under 35 USC 102(b) based on an affidavit that the invention was in the public use in this country more than one year prior to the date of the application for a patent in the United States.
(C) A rejection under 35 USC 102(e) that the invention was described in a patent by another filed in the United States before the invention thereof by the patent applicant.
(D) A rejection under 35 USC 102(f) based on an affidavit that the applicant did not himself invent the subject matter sought to be patented.
(E) A rejection under 35 USC 102(b) that the invention was on sale in this country, more than one year prior to the date of the application for patent in the United States.
Y31. 10.03.p.21. Which of the following would comply with the patent laws, rules and procedures as related in the MPEP and would be a fully responsive reply to a non-final Office action on the merits rejecting all the claims in the application as being unpatentable under 35 USC 102 and/or 103 over prior art references?
(A) A timely filed and properly signed written reply which does not include an
amendment to the claims, but includes a request for the examiner’s rejections to
be reconsidered supported by arguments replying to every ground of rejection and
distinctly and specifically points out the supposed errors in every rejection. and
pointing out the specific distinctions believed to render the claims patentable over
any applied references.
(B) A timely filed and properly signed written reply which includes an amendment
canceling all the claims in the application and adding new claims, and a request
for the examiner’s rejections to be reconsidered in view of the newly presented
claims.
(C) A timely filed and properly signed written reply which does not include an
amendment to the claims, but does generally alleges that the claims define a
patentable invention.
(D) A timely filed and properly signed written request for continued examination
(RCE).
(E) All of the above.
Y32. 10.03.p.22. Which, if any, of the following statements is in accord with the patent laws, rules and procedures as related in the MPEP?
(A) Where an inventor’s residence is stated correctly in the 37 CFR 1.76 application data sheet and incorrectly in the inventor’s 37 CFR 1.63 oath or declaration, the discrepancy must be corrected by filing a supplemental 37 CFR 1.67 oath or declaration giving the correct residence.
(B) Where two inventors file separate 37 CFR 1.63 oaths or declarations which do not identify both inventors, the USPTO will presume they are joint inventors and will not require new oaths or declarations.
(C) A dependent claim which merely repeats a limitation that appears in the claim on which it depends is properly rejected under the fourth paragraph of 35 USC 112.
(D) In a statement under 37 CFR 1.97(e)(1) specifying that “each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement,” the three-month period begins on the date the communication was first received by either a foreign associate or a U.S. registered practitioner.
(E) None of statements (A) to (D) is correct.
Y33. 10.03.p.23. A patent application is filed having one claim (claim 1). The most relevant prior art uncovered by the primary examiner, after searching the claimed subject matter, is a published abstract summarizing the disclosure of a foreign patent document. The abstract is in English, the foreign document is in German. Both the published abstract and the foreign document are prior art under 35 USC 102(b). The published abstract provides an adequate basis for concluding that claim 1 is prima facie obvious under 35 USC 103. Which of the following actions is in accord with the patent laws, rules and procedures as related in the MPEP?
(A) Reject claim 1 under 35 USC 103, based on the abstract, because it is a publication in its own right and provides sufficient basis for a prima facie case of obviousness.
(B) Reject claim 1 under 35 USC 103, based on the abstract, because disclosures that are not in English cannot form the basis of a prior art rejection.
(C) Reject claim 1 under 35 USC 103, based on the German-language patent document, as evidenced by the abstract.
(D) Do not reject claim 1 based on the abstract; instead, obtain a translation of the German-language document and determine whether its full disclosure supports a rejection under 35 USC 102(b) or 103.
(E) Do not reject the claims based on the abstract because an abstract can never provide sufficient disclosure to be enabling.
Y34. 10.03.p.24. Applicant filed a provisional patent application in the USPTO under 35 USC 111(b) on Tuesday, November 30, 1999. On Tuesday, November 28, 2000, applicant filed a nonprovisional application in the USPTO under 35 USC 111(a) that properly claimed priority under 35 USC 119(e) to the filing date of the provisional application. On Wednesday, November 29, 2000, applicant filed an international application for patent in the USPTO under the Patent Cooperation Treaty that designated the United States and properly claimed priority to both the provisional and the nonprovisional applications. On Friday, July 28, 2001, applicant filed a national stage application in the USPTO under 35 USC 371, providing all of the requirements under 35 USC 371 and properly claiming benefit to the filing date of the provisional application under 35 USC 119(e) and the nonprovisional application under 35 USC 120. The national stage application was published on Tuesday, January 30, 2002 and issued as a patent on Tuesday, February 4, 2003. Assuming no patent term extension or adjustment, the patent term ends on the date that is 20 years from which of the following dates in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) Tuesday, November 30, 1999
(B) Tuesday, November 28, 2000
(C) Wednesday, November 29, 2000
(D) Friday, July 28, 2001
(E) Tuesday, February 4, 2003
Y35. 10.03.p.25. A registered practitioner files a nonprovisional utility application in 2000. In 2002, the practitioner files a continuation-in-part application and claims benefit of the filing date of the 2000 application for the 2002 application. Thereafter, the practitioner amends the 2002 application to include claims that were not present in either the originally filed 2000 application or the originally filed 2002 application. The primary examiner properly concludes that the added claims are not supported by the original disclosure in either application. Which of the following is in accord with the patent laws, rules and procedures as related in the MPEP?
(A) The added claims are rejected for lack of written description under 35 USC 112, first paragraph.
(B) The added claims are rejected as new matter under 35 USC 132.
(C) The added claims are denied benefit of the filing date of the 2000 application.
(D) (A) and (B).
(E) (A) and (C).
Y36. 10.03.p.29. On Thursday, February 6, 2003, applicant files an application for a design patent in Country X, which issues the patent on the filing date. In accordance with the patent laws, rules and the procedures as related in the MPEP, what is the last date applicant can file a U.S. design application to avoid any loss of patent rights?
(A) Friday, February 6, 2004 (assume not a Federal holiday).
(B) Thursday, February 5, 2004 (assume not a Federal holiday).
(C) Wednesday, August 6, 2003.
(D) Wednesday, May 6, 2003.
(E) None of the above are correct.
Y37. 10.03.p.28. A patent application is filed disclosing and claiming a system for detecting expired parking meters. The specification fully supports the original, sole claim. The application discloses that the “electronics control unit” contains a comparator and an alarm. The application includes several drawings. One of the drawings shows a block diagram of the system, illustrating the electronics control unit as a box, labeled “electronics control unit.” The sole claim of the application is as follows:
The claim. A system for detecting expired parking meters, comprising: a timer mechanism; an infrared sensor for detecting the presence of a parked vehicle; and an electronics control unit, including a comparator and an alarm, coupled to the infrared sensor and the timer mechanism. A final Office action, dated February 3, 2004, indicates that the sole claim contains allowable subject matter, but includes an objection to the specification, on the grounds that the subject matter of the electronics control unit, though described in a sufficiently specific and detailed manner in the original specification, was required to be shown in the drawings under 37 CFR 1.83. The Office action did not set a period for reply. Determine which of the following actions, if any, comports with the patent laws, rules and procedures as related in the MPEP for overcoming the objection.
(A) On April 1, 2004, a Notice of Appeal is filed together with appropriate fees, and a brief pointing out that a patent should issue since the subject matter of the electronics control unit was adequately described in the original specification.
(B) On April 1, 2004, a drawing is filed in the USPTO illustrating only the comparator and alarm of the electronics control unit that was described in the original specification.
(C) On April 1, 2004, a Notice of Appeal of appeal is filed together with appropriate fees, and a brief pointing out that the addition of a drawing showing the electronics control unit would not constitute addition of new matter since the electronics control unit was adequately described in the original specification.
(D) On September 1, 2004, a petition is filed urging that no further drawing should be required because the subject matter of the electronics control unit, for purposes of the application, was adequately disclosed in the block diagram drawing.
(E) None of the above.
Y38. 10.03.p.30. Co-inventors Smith and Jones filed an application for a patent on a cell phone, on May 15, 2002. They received a first Office action from a primary examiner rejecting the claims under 35 USC 102(a) over a publication by Bell and Watson, published on April 5, 2002, describing a cell phone having all the same features as is claimed in the patent application. In reply, the co-inventors each submitted a declaration under 37 CFR 1.131 stating that they had actually reduced the invention to practice no later than March 13, 2002. However, the declarations failed to include two claimed features. Neither the particular antenna needed to enable the cell phone could receive transmissions from the local cellular transmitting tower, nor a detachable carrying strap was included in the declarations. As evidence of their prior reduction to practice, Smith and Jones submitted their co-authored journal article. The journal article contained a figure of the cell phone as described in the declarations. That is, the cell phone shown in the figure of the article lacked an antenna and a detachable strap. The article was received by the journal on March 13, 2002, and was published on April 30, 2002. The cell phones shown in the figure in the Bell and Watson publication, and in the Smith and Jones patent application have the particular antenna and a detachable strap. Which of the following actions, if taken by the examiner, would be the most proper in accordance with the patent laws, rules and the procedures as related in the MPEP?
(A) The examiner should maintain the rejection of the claims under 35 USC 102(a) and make the rejection final.
(B) The examiner should withdraw the rejection and look for references which have a publication date prior to May 15, 2001.
(C) The examiner should withdraw the rejection and notify Smith and Jones that their application is in condition for allowance.
(D) The examiner should maintain the rejection, but indicate that the claims would be allowable if Smith and Jones provided an original copy of the figure published in their journal article as factual support for their declarations.
(E) The examiner should maintain the rejection and inform Smith and Jones that the declarations are insufficient because they cannot “swear behind” a reference which is a statutory bar.
Y39. 10.03.p.31. In accordance with the patent laws, rules and procedures as related in the MPEP, for a nonprovisional application to receive a filing date in the USPTO under 37 CFR 1.53(b), all of the following must be filed except:
(A) An oath or declaration executed by applicant pursuant to 37 CFR 1.63.
(B) A specification as prescribed by the first paragraph of 35 USC 112.
(C) A description pursuant to 37 CFR 1.71.
(D) At least one claim pursuant to 37 CFR 1.75.
(E) A drawing when required by 37 CFR 1.81(a).
Y40. 10.03.p.32. Determine which of the following documents, if any, must also contain a separate verification statement in accordance with the patent laws, rules and procedures as related in the MPEP.
(A) A request to correct inventorship in a pending application.
(B) A petition to make an application special.
(C) A claim for foreign priority.
(D) A substitute specification.
(E) None of the above.
Y41. Reported Question. Applicant claims a toy plane whose wings are covered in aluminum foil but whose body isn’t. The spec describes a toy plane comprising wings covered in aluminum foil. Reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Claim is rejected by the examiner under 102. Applicant timely responds, arguing that covering only the wings in foil provides useful aerodynamic properties, and therefore the claimed invention is distinguishable from the reference. How should the examiner respond?
A) Withdraw the rejection.
B) Make the rejection final.
C) Suggest an interference.
D) Impose a restriction requirement.
E) None of the above.
Test Y Answers
1.A or E 23.E
2.D 24.C
3.E 25.D
4.D 26.D
5.A 27.A
6.C 28.B
7.B 29.B or D
8.C 30.C
9.B 31.A
10.D 32.E
11.A 33.A or D
12.C 34.B
13.E 35.E
14.C 36.C
15.E 37.B
16.A 38.A
17.A 39.A
18.E 40.E
19.A 41.B**
20.E
21.D
22.D
**Y41 Answer
I said the examiner should maintain the rejection b/c the claim is broad enough to include a plane that is covered entirely in aluminum foil (limitations present in the spec will not be read into the claim if not expressly recited A patent of a paper airplane with aluminum foil (I think) wings. The prior art is a plane covered with aluminum I think. Is it patentable? similar to Oct 2003: PM 46 (airplane with foil on wings, prior art has airplane covered completely in chewing gum wrapper)
I recently reviewed this answer at the PTO. Yes, the examiner should maintain the rejection in view of practitioner’s arguments. The answer description points out that the claim is open-ended (“…comprising wings covered in aluminum foil”). Thus, the prior art anticipates the claim.
Sun’s about to come up – looking for a telephone booth. Damn, can’t find one!
Wow…Mambo5, many thanks for your contribution. I’m not at the question taking phase of my studies yet (still working through figuring out the layout of the MPEP and getting a 10,000 foot view from the guidelines here and on other sites) before I start into Q’s, but I’ve copied and saved these bad boys for a time in the near future.
Mambo5 – this is EXTREMELY helpful. Thank you so much for posting!
Hey there M5 – you and Dr. Who are gonna look a long time for that booth in 2012! Guess you’ll need an app for that on your smart phone.
JP
I just passed the patent bar using PLI’s Exam Focus Patent Bar Review materials. I purchased these materials full price ~$2,000 but I am selling them for only $500 because: they are from 2010, it does not include Patware and there are some highlighting and writing. Patware is now accessed online rather than on CD.
I have ALL the updated supplemental materials starting from 2011 until 2012 because PLI was kind enough to send them to me.
Although I bought the materials in 2010, I used all of the same materials when I passed on Feb. 1, 2012.
The materials include:
All lectures on CD (from 2010)
Course Lecture
Study Guide
Claim Drafting and Amendment Supplement
Study Guide Exercise & Practice Exam Materials
ClaimsLight/Claim Drafting Workbook
Post Course Materials
Key Words Glossary
Updates on the 2011 and 2012 changes
I am located in SF Bay Area so if you’re local, we can meet at a public place for you to check out the materials.
sertag@hotmail.com
Thanks for looking!
This is a testimonial…
I passed the patent bar exam today (first attempt). Thank you to all of the contributors to this website (MyPatentBar.com). This website was my study guide. Over approximately 10 weeks I estimate that I devoted about 250 hours in preparation. Starting slowly at first and gradually building with intensity as my exam date drew closer. Basically, I studied the information provided under the “Study Guide” tab of the website during the early weeks, seriously, thoroughly studying the subject matter and referring when necessary to MPEP to add clarification. Also during these early weeks I read all of the supplemental source material identified on the USPTO website. This effort consumed the first 6+ weeks. Then, for about the last four weeks I intensely studied this website’s “Exam Questions and Concepts” and the “Repeat Questions” tabs, as well as the “Old Exam” questions/answers from the April and October 2002 and 2003 exams that were not included under the “Repeat Questions” tab. I can’t overemphasize that when you study these exam concepts and exam questions, you should NOT be doing it in an effort to commit the specifics of the question/answer to memory, but to familiarize yourself with just how patent bar exam questions are structured and to, most importantly, increase your understanding of the application of patent law in various scenarios. It is important to not only understand why the right answer is right, but also why the wrong answers are wrong. I spent a lot of time during this effort going back to the MPEP and reading (and understanding) the referenced provisions. This helped at lot because on my exam today there were no more than about 25-30 questions that were recognizably repeat questions (or variants). However, being able to carefully read the exam questions and answer choices and then “reasoning” (deducing) what I felt to be the correct answer based on my understanding of the resolution in closely similar scenarios I am sure benefited me. Finally, I think that the exam was a fair test of one’s understanding of the principles of patent law. I detected no trick questions or questions focused on nuanced minor facts. It benefited me greatly to have put in place a preparation strategy that I tracked closely on a regular basis during the 10 weeks. I wanted to give myself a fair chance of passing on the first attempt and I thank God that my efforts paid off. It was important for me also to not only go into this exam feeling confident about my preparation, but also to take a deep breath, slow down, and be sure to intently concentrate during the exam. I completed the exam one question at a time on a pace that essentially consumed the two full three-hour sessions (100 questions total). Again, special thanks to the MyPatentBar.com website owner(s), and thanks to all the contributors. The questions and answers provided by the numerous contributors (in the forums) were very helpful too. Thanks.
Hi Patjd,
Do u still have the study material?
Recently passed the patent bar using PLI’s Exam Focus Patent Bar Review materials. I purchased these materials full price ~$2,000 but I am selling them for only $400 (including shipping) because: they are from 2010.
Although I bought the materials in 2010, I used all of the same materials when I passed the exam on Feb. 12, 2012. Everything is in VERY GOOD condition. NO MARKINGS or HIGHLIGHTS.
1. PLI Patent Bar Review Home Study Course, and covers presently tested material by the USPTO (MPEP E8r8).
2. Bullseye Patent Bar Prep Materials. (CD Format)
The complete Home Study Course includes:
•PLI Exam Focus 3-Ring Binder:
◦Course Schedule
◦Study Guide
◦Patentability Insert (35 U.S.C. 101-103, 112)
◦Study Guide Exercise & Practice Exam Materials
◦Claims Light/Claims Drafting Workbook
◦Claim Drafting & Amendment Supplement
◦Post Course Materials
◦Key Words Glossary
•PLI Claims Light Workbook
•PLI Prime Questions Workbook
•PLI Pre-Course Material Workbook
•PLI Patent Bar Review Audio CDs (Set of 36)
•PLI Patent Bar Review DVDs (Set of 8)
•PLI PatWare version 9.0 software
Email: yinjdlaw@gmail.com
Paypal payment.
Hi again to my IP amigos! Just today I received my official Patent Agent certificate in the mail. Since I kept an informal calendar-log, I thought I’d share it with you so you’ll have an idea what to expect after you pass your exam:
26 JAN – PASSED the exam!
3 FEB – Rcvd from USPTO Oath to be signed and Contact form to be completed.
4 FEB – Mailed in notarized Oath and completed Contact form and $100 reg. fee.
28 FEB – Name published in the Gazette (viewable online) Reg. to Practice Sec.
19 MAR – Listed on USPTO website as a registered practitioner.
2 APR – Rcvd from USPTO framable certificate and agt logon/update ctc info.
Best of luck to you all, and keep up the good work! I’m sure many of us will cross paths out there in IP practice. It’s a small world.
Mambo… I am awaiting my certificate. What are its dimensions… 8-1/2 x 11 inches? (I want to pre-order my frame).
Thanks.
Yes, it’s 8-1/2 by 11. The certificate is on that heavy parchment-type paper with a gold foil seal, signed by USPTO Director David Kappos!
Mambo, Did they mail the certificate to your law firm or to your residence?
And which is preferable to list on the contact form? or does it even matter?
Thanks Mambo5. I am ordering a very nice frame from http://www.americanframe.com.
Does the frame come in gold leaf?
Any color you can imagine is available from this vendor… even “ghostly” colors.
Hey Miranda, sorry but I don’t know the answer to your question. I only gave them one address, my residence, since I am still awaiting bar admission, and am not working as a patent practitioner yet. Hopefully that will all be changing next month!
For now my certificate is stuffed in my box of important papers with everything else. But you can bet I’ll be going for a fancy frame too, as soon as I have two patents to rub together!
For the date of registration, do they list the exam date or the date you become listed on the site as a practitioner?
It’s the date that you fully clear “waivers” (i.e., no amoral or unethical reports on you from the general public) and they list your name on their registry. So for example, if people can respond to their call for bad info on you up to and including June 5 and USPTO receives nothing, then on June 6 they will put your name on their website registry and your official registration date will be recorded as June 6.
Hello fellow IP colleagues and especially to my super hero, Mambo 5!
Today, I’m proud to say, I can don the tiara and power bracelets, and billow the cape of success as I too have passed the Patent Bar Exam this month of June 2012!!
Thank you for all of your thorough responses and study guides and exam feed back. Mambo 5 your exams were great! Thank you.
Besides really going through Apr 2003/2002 and Oct 2003/2002, I did every single old exam I could find, read over the answers for all the choices and made sure I understood those sections of the MPEP. Memorized as many old questions as possible and narrowed down my weak areas by repeatedly doing questions in the Question Banks by chapter provided by the Bull’s Eye Study guide. That guide and this website were all I needed. I did take the exam previously (Mar) and missed by five points. So I did go to review the exam at the USPTO, which helped tremendously. If you are second time test taker, reviewing your missed questions is worth the trip.
Here are some of the new questions I got.
1 -103 (c) stuff – Know this well. Here’s a link:http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2146.htm
There are also old exam questions that deal with it. I got about 5 questions on this topic.
2 – 102(b), 102(e), 102 (a), 102 (g) and 102 (f) Thoroughly tested.
3 – Chapter 609 on IDS rules
4 – Chapter 800 on linking claims.
5 – A few Bilinski and one or two Leahy questions.
6 – Assignee – What can they do if they are partial Assignee? What are they limted to? Can they do ex-parte? Prosecute?
7- PARTIAL ASSIGNEE HAS TO FILE JOINTLY TO PROSECUTE> ASSIGNEE OF ENTIRE INTEREST CAN DO IT ALONE.
8 – Assignee question – What does the USPTO do when an assignee is not chosen? Court assumes that there is an assignee if the application is silent on the matter.
9 – Trade secret question
10 – What happens to material under examination for trade secret? (I, II, III, IV choices). Do you need an NISR? or something to get it expunged? Does the examiner keep it in an envelope. What if some of it is ok for the public and some of it is not? Then is it all automatically available for public inspection?
Unless there is a filing to keep something secret, the examiner will allow it to be public?
Or does examiner keep trade secret stuff in a sealed envelope, no matter what? IF MATERIAL TO PATENTABILITY< IT IS LEFT OPEN TO PUBLIC. IF NOT MATERIAL, IT IS KEPT IN ENVELOPE IF REQUEST/PETITION TO EXPUNGE IT IS MADE.
11 -New AIA Question – 66 y/o man goes to emergency room gets idea for blood pressure machine.He wants the USPTO to accelerate review of invention (w/in 12 months) He files application to make special (since over 65) / 4 independent claims/total of 30 claims underTrack 1 (in 2012 there have only been 500 appl under Track I).
12 -Shoe polish shown to grow hair. How can you claim this invention?
(Claim the method of growing hair).
13 – Piecemeal (check the exam concepts)
New one on a claim to a composition comprising 25-60% A. The spec discloses a range of 25-60% A, with specific embodiments of 36% and 50% A. The examiner rejected the claim as anticipated under 102(b) by a reference that only discloses a composition with 25% A. In response to the rejection, the applicant amended the claim to "at least 35% A." The examiner maintained the 102(b) rejection and further rejected the claim under sec. 112, first paragraph for lack of written description support. In response, the applicant amended the claim to "35-60% A." Which action, if taken by the examiner, would be in accord with proper USPTO practice and procedure?
the answers all involved some combination of withdrawing and maintaining the 102(b) and 112 rejections. Some possibilities include: A. Maintain the 102(b) rejection and withdraw the 112 rejection. B. Maintain the 112 rejection and withdraw the 102(b) rejection. C. Withdraw the 112 rejection and also withdraw the 102(b) rejection. (C is the one I picked) D. Maintain both the 112 rejection and the 102(b) rejection
13 – Ex-partes and interpartes.
14 – Series of claims…deletion of inventor whose claim also gone.
how is this handled? If an inventor is removed from an oath or declaration? Who signs?
When do ALL inventors sign something and when is it ok for just one inventor to sign?
16 – Where are fee notices mailed to?
17 – WHen is it ok to not pay an issue fee? How long do you have to pay an issue fee?
18 – PCT
19 – Dates that US/RO and IB are important for submission and filing of patent applications.
20 – What happens if it's a provisional rather than a non-provisional?
21 – Amendments
How are these handled with the different types of patent submissions? When can amendments be added after something has gone to appeal?
22 – Reissue
Can this happen for design patents? Or just utility and plant? What date did this all change?
23 – Certificate of correction versus reissue. WHat forms of corrections is used on what documents? Red lining, bracketing?
24 – Specifications, drawings..is that all that is needed for a reissue?
WHat about a continuation-in-part?
25 – Appeals – Oral hearings. What is allowed after appeal brief? Supplemental materials just from examiner or can applicant also submit. Timing of notice of appeal and appeal brief.
26 – Who pays attention to the correction of a claim after notice of appeal?
27 – When does the application go to the jurisdiction of the Board of Appeals? After brief or after notice of appeal?
28 – Does the examiner get application back after decision is made by the Board?
29 – Problem with getting a filing date w/o a claim. Will converting from nonprov to prove help get a filing date (since w/o a claim)?
The question was which one of these can a 1.131 affidavit over come? Many had 102(b) which is wrong, but one was 102(a) and 102(g)…
(I picked the one with just 102 (a)
30 – Combination/subcombination – Restriction requirements. (see chapter 800)
When can an examiner add restriction requirements? Before the first office action, after the first office action? After the second office action, after final rejection?
31 – When do applications get abandoned?
From when is the length of the patent term measured? From 3 month statutory response time? Or from the last OA if falls before the end of the statutory response?
33 – Electronic signatures, EPS? E-submissions. Question was something about how to ensure that your electronic signature was valid?
34 – What can be submitted by facsimile. What can be submitted from a foreign country and still get a filing date?
35 – What are the only things needed for a reissue submission?
Fees? Drawings?
36 – Copies of oath or declaration? When is it ok to send copies of these and when is it not?
37 – Can you send copies by regular mail?
I said no, can't send by regular mail. But I didn't see the question during my USPTO review, as a missed question.
Here's an excerpt that applies to this question
COPIES OF OATHS OR DECLARATIONS ARE ENCOURAGED
A copy, such as a photocopy or facsimile transmission, of an originally executed oath or declaration is encouraged to be filed (see MPEP § 502.01), especially since applications are maintained in electronic form, not paper. The original should be retained by applicant, or his or her representative as evidence of authenticity. If a question of authenticity arises, the U.S. Patent and Trademark Office may require submission of the original. See 37 CFR 1.4(d)(1)(ii).
Express mail, Certification of mailing. Does the express mail just need the "date in" to be accepted for filing date or does the document also require the number of the express mail written on the corresponding document?
39 – French patent – Pierre got a French patent. then he applied for one at the USPTO. Question tested 102 (b) and 102 (d).
He filed in France, patent issuedthen tried to file in US after more than 1 year – barred under 102(d). One answer gave option of
102(b) and 102(d) but it wasn’t 102(b) because the French application had just published before the filing.
40 – PTA – Dates that these are applied and to what types of patents? Who is eligible for patent term adjustments. WHat kind of patents are available for these.
41 – Designs, Utility, Plant – Designs only do CPA after a certain date (and Utility and Plant can do RCE after a certain date).
42 – When are CPAs used, when are RCEs?
Timing of responses to office actions and when things get abandoned.
43 – Double patenting – What is it when there is one application pending
Know other kinds of double patenting rules too. How to overcome.
44 – One about common ownership. Which rejections are overcome by common ownership issues.
45 – What is the difference between public use and sales? IF a sale is private, does that constitute public use? Is public use the same as on sale?
46 – A long one about sales and how it influences rejection of the patent.
Also, deeply understand the priority stuff with overcoming rejections..claiming a priority to, 119 a-d. and What about 120? 122?
47 – Know CFR 37 1.105 backwards and forwards. There were a couple of tricking ones with this rule.
48 – Access to applications – Reel number? If someone who is not inventor wants to look at a published abandoned application, what can they see?
49 – KSR – Is the examiner obligated to use one of the 7 points in the KSR to reject a patent application due to obviousness? Question was that the practitioner noticed the examiner did not use any of the 7 KSR rules to reject a patent due to obviousness. Is that necessary for the examiner to reject to a patent?
50 – A claims numbering question where the answer wasn't just "147" but you actually had to do the calculation
51 – What happens when a practitioner is suspended and two applicants need to do something else to process their patent.
53 – After a notification of allowance comes through, but the applicant dies, what happens? Does this notice get accepted by the attorney? Does the USPTO do something to reverse the notice?
Does notice still come through and does the USPTO wait to hear from the legal representatives?
54 – Enablement – What is needed to go into the enablement portion of the application? What sorts of things are applicable in enablement?
What goes into the specification?
How is a change in the specification versus a change in the claims handled?
55 – Compound Y cures cancer. Patent A is about Y doing something else. How is it ok to use these for an obviousness rejection?
What reasons for combining these as obvious to try.
Also, substitute one for another (KSR)
56 – Third party protests – When can they do this? When will someone listen to them? In case of proving fraud, what kind of evidence do they need?
57 – Journal articles (for 102a) valid?
Are journal articles used by third party for protests?
The protests questions were around the duty of disclosure..in cases where examiner know of a judicial decision against the patent application, but applicant did not reveal this.
Can he protest? What does examiner do?
58 – Pre-grant publication..what are the rules around something getting published? The japanese, 45 date publication was there.
59 – Obviousness – What factors are considered by the practitioner for obviousness?
60 – Susy and foreign patent preparation. Does she have a duty of disclosure? (yes, she does). When a company hires a foreign office to do patent preparation.
61 – IDS – What goes into these and when are they done? How are they used? Meaning if someone puts a list into a IDS, does that fulfill a search requirement? (No, it doesn't fulfill a search requirement).
62 – What happens to an application in Japanese, from Japan. that goes to the US/RO.is the applicant invited to submit a translation or is it directly routed to the IB?
In summary fellow exam takers, when I did enough of the old exams, I got a very good idea of what topics the USPTO favors over and over and what to expect. The exam is still challenging of course, but it's great to see some old favorites from the past exams and to recognize the concepts in new questions.
Good luck to all of you and thank you again for being such a great community.
JP
Thank you !!!! – in tears :’)
You are welcomed. When do you take your exam Potential?
JP
(did this post help?)
JP,
Congrats! I second what you wrote…I think studying old exams is 2/3rds the way to go. For sure, one needs SOME sort of understanding of the MPEP…but, I think the bulk of that CAN be learned through old exams. That, of course, will “phase out” as newer questions are cycled in. But, for the time being….
Well done!
Bfusion – Your note means so much to me! I Glad to see a familiar poster!
I even did exams from 1997, and it gave me a feel for how the exam evolves as new rules (and thus) new questions are folded into the themes.
USPTO exams still maintain traditional questions with old-school inventions however, like “rocking horses.” Unless that’s a new type of software ;-).
Carry on. JP
Agreed JP, just so glad to see familiar posters -BFusion who always posts valuable and informative comments to post again… I will post my test questions after I finish my test as pay back to this site.
As to your # 30 – Combination/subcombination – Restriction requirements. (see chapter 800)
When can an examiner add restriction requirements? Before the first office action, after the first office action? After the second office action, after final rejection? – Do you recall any specifics about the question? Combination/Subcombination are my weakest points… Tks.
Hi There Potential. Here’s the question I saw on my exam (more or less) on combination/subcombination.
It involved a Heat exchanger and mold to make casing(?) (subcombination/combination)
The answer was “C”
Election of one subcombination.
(the other answers to your question are in 800 somewhere, but I’ll have to take a look tomorrow).
Hope this tidbit will satisfy for now.
JP
Potential! First, I applaud your efforts in taking an exam that is not necessarily in your native language. Second, I also had some issues that had to be surmounted to take and pass this exam successfully.
Here’s what I learned after taking the exam and passing it the second time.
The design of the exam does have a tendency to include superfluous facts meant to disguise the real kernel of the concept being tested.
I noticed this while studying the much older exams (1997, 1998) that are provided on this website too. I do know that the law has continued to evolve since then and that taking these older exams does not reflect the present exam as accurately. But part of preparing for the exam also includes developing a test taking strategy that emphasizes your strengths and minimizes your weaknesses. So I tasked myself with taking the older exams once I had mastered the more recent ones. This allowed me to work on strategy as I already knew what the new rules were (versus the old ones). I got very good at eliminating the superfluous facts in the questions and zeroing in on the “meat” of the question. And this tendency of the USPTO exam design has been carried over into the newer exams: that of using a few misleading phrases or words to “trick” you into thinking the question is about one subject (and chapter) when really it is about another. The resource I wanted to share with you is a set of free lectures *audio that are provided by a patent law office website I found while preparing for this exam. Here is the link.http://shop.oppedahl.com/Learning-about-the-US-patent-application-process-035.htm?productId=18
Perhaps the audio plus the written exposure to the question will help you also get more confident with your language challenges Potential.
Good luck and I hope to see a happy post from you after your exam.
JP
JP: Hope you still read this site…
what does your #8 mean that court would assume there is an assignee? If no assignee?
“-8 – Assignee question – What does the USPTO do when an assignee is not chosen? Court assumes that there is an assignee if the application is silent on the matter.”???
Chapter 300 says, (A)The application has not been assigned, and ownership resides solely in the inventor(s).
Ah! Hello’s all around! JP and Potential, hope you are well! Potential, I’d say good luck, but you don’t need it! It sounds like you’ve been studying hard and well for this exam. You can do it!
Lol.. rocking horses. Either that or heavy metal stallions.
A good way to review questions prior to your test is to come here everyday, look at the new comments and make sure you know the how to answer the question the commenter makes remarks on. It’s a good way to test your knowledge and it personally helped me a ton.
Hello,
I’ve recently began my preparation for the Patent Bar exam using a used PLI review study course. I’m currently half way listening to the audio cd’s and wanted to thank everyone for this great site. My plan is to take the exam at the end of May and hopefully pass the exam. I remember reading that the USPTO will be changing the format of the exam, or rather adding more material to be tested at some point in 2012 and that anyone seeking to take the exam should do so before this change takes place. Can anyone confirm or provide more details about this? Thanks in advance.
Hey Oscar,
A member of PTO’s Office of Enrollment and Discipline gave a lecture at my law school a week or two ago. From what I remember he said that the big changes will start to happen in the Fall, and definitely by next spring the exam will be much different and more comprehensive than it is now. (I’m not sure of specific dates). So I think you should be OK for May. But I would recommend you keeping up to date with this site and pay attention to what questions are being asked all the way up until your test day. I took the exam on 4/6 and I’d be on this site daily in the week or two leading up to exam. Good luck!
Hey Oscar,
All the best for the upcoming exam!
If you would be kind enough to sell your PLI materials once you are done, please contact me at demunshi@gmail.com
I am starting to prepare for the exam in August 2012.
I sat for the patent bar earlier today and passed it on the first go, largely thanks to this website.
Giving back, here are a few questions that I remember seeing:
– Tables and CD-ROMS (52 tables of half-page size in two different CD’s. Answered that it was improper because <100 pages and CDs were not sent in duplicate)
– I had about three Bilski questions, all of which were searchable word-for-word in the guidance (one of them was about an invention that claimed transitory signals…not patentable subject matter)
– I had one question on the updated Rules before the BPAI about claimed subject matter in a brief (the answer was word-for-word from the guidance: must "include references from the specification by page and line number or by paragraph number, and reference to the drawings, if any, by reference characters.")
– Required items in an accelerated examination for soil treatment
– Potter
– Moon Dust
– PCT from Costa Rican applicants (sent to IB, retains IA filing date)
– Tommie and Jo inventorship/assignment question
– Submission of color drawings in design apps
– What doesn't need to be submitted in a recording of assignment (copy of the patent/app)
Where is the guidance that you refer to when talking about the Bilski questions? Are they in the MPEP somewhere? Or in another document that we can use on the test?
Has anyone tried or used exam simulators? Are any of them any good? Are there any to stay away from?
I tried the usptoExam.com (ad for this site) but they were not accepting new subscriptions. I’ve considered three others:
-CATPrep Simulators (free unless you want it graded),
-capital-patentprep.com cost $60 bucks and sounds like they created questions of their own (most updated copyright), and
-Small Entity.com patent simulator costs $30 bucks.
I have yet to see one that specifies it uses answers derived from e8r8.
passed yesterday with only 2 weeks of *real* studying (one chapter a day of OmniPrep practice questions, followed by ~40 practice questions / day of past exams and Mambo5’s compilation in the last 2 days). I’ve also been working in the field (as an associate at an IP firm) for 5+ years, so most of 101/102/103/ksr/bilski, as well as chapters 600, 700, and 2100 were old hat, at least in a qualitative sense. Here’s as much as I can remember after my bender last night:
-At least 5 KSR questions
-One Bilski question
-Lots of PCT including elements of IA, can a US national stage app claim priority to US provisional, as well as several where the USPTO acts as receiving office (RO)
-broadening reissue / correction of inventorship
-Moon Dust
-Approx 40% we repeats from 2002/2003 tests, it was nice knowing most of these cold so I could check the right answer and spend more time on the unfamiliar ones.
Speaking of which, I want to emphasize that for someone like me who didn’t really study very hard, efficiently SEARCHING the materials was probably what enabled me to pass. In each 3-hour block, I finished the 50 questions in under 2 hours, and used the last hour to review the unsure ones and scan the materials. Someone said it before and I’ll say it again: search broad (i.e. the name of the subsection) before searching narrow, otherwise the software will direct you to every instance of your search term. Avoid using keyboard shortcuts, you may crash the Prometric PCs. Take your time, but don’t get stuck. And USE Appendix R for quick CFR lookups before delving into MPEP.
Thanks to this site for my *very* last-minute prep tool! it is possible to spend <1mo preparing, though not for everyone…
Congrats Satchmo! So, as a conclusion, can US national stage app claim priority to US provisional? Answer Yes?
Does anyone have the patent bar material to sell? I am planning to take the exam this summer. Thank you so much!!
-Dora
BTW, please email me ddh2739@yahoo.com, if anyone has materials to sell…Thanks a lot!
on the prometric test, can the MPEP be resized so that it is able to be read at the same time as the questions.
Do you have any kind of material showing the process for USPTO? like
1 filing Application
2 examining Application
3 Publish Application
and so on
I mean the sequence for process, the order for each process.
Thanks a lot
George Bishara
Can someone tell me how to look for previous “Recent Comments”? I can only see about 10 recent comments each time on the screen, but to look for the comments prior to the most recent, such as semi-recent comments, how do I look for them?
Thank you,
Try the search function for a key phrase or word. IF that doesn’t work, scroll up from the bottom of each section.
Good luck Potential. When is your big day?
JP
Thanks JP. It’s next week… ah… I do have a few questions on your posted questions. Will you keep an eye on this site for about one week? Thanks a lot!
This question popped up both times I took exam. It’s an old exam question but the key is, still a fav concept they like to test.
26. When, in accordance with the patent laws, rules and procedures as related in the MPEP, is a supplemental oath or declaration treated as an amendment under 37 CFR 1.312?
(A) When filed in a nonprovisional application after the Notice of Allowance has been mailed.
(B) When filed in a reissue application at any point during the prosecution.
(C) When filed in a nonprovisional application after the payment of the Issue Fee.
(D) When filed in a reissue application after the Notice of Allowance has been mailed.
(E) (A) and (D).
26. ANSWER: (D) is the most correct answer. MPEP § 714.16, third paragraph, states “a supplemental reissue oath or declaration is treated as an amendment under 37 CFR 1.312 because the correction of the patent which it provides is an amendment of the patent, even though no amendment is physically entered into the specification or claim(s).”
Answer (A) is incorrect because a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312 except when submitted in a reissue. See MPEP § 603.01.
Answer (B) is incorrect because a supplemental oath or declaration in a reissue will be treated as an amendment under 37 CFR § 1.312 only if filed after allowance.
Answer (C) is incorrect because amendments filed after the date the issue fee has been paid are no longer permitted under 37 CFR § 1.312. (E) is wrong because (A) is correct.
Thanks JP.
It will be really nice if you list up the questions… I know you did post the outlines of the questions, but it will be great if you still remember any of those fact patterns… hope I am not asking too much.
Potential! I don’t know if I can remember all the fact patterns. But any that I can I’ll try to post before your exam. Good luck!
JP
Thanks a lot JP, that’s all I am asking for… English is not my native language, I feel if I somehow know the fact pattern, I will feel less panicking when I see something that I have never seen – need to overcome this language handicap:) But really, like there was one word “superfluous” in the old exam, I did not know what the meaning was, no matter how hard I tried to guess the meaning, I perhaps will not be able to get the answer right without knowing the meaning… but again, congrats for your pass! It’s great you did not give up and keep trying!!
Potential – I posted my reply to this at our original thread. Hope you see it.
JP
Thanks JP! I saw it.
I am seeing IndiJons is posting repeated questions, and he or she is saying in the morning session, only had 3 repeats… must have been brutal…
But still he had repeats, so I will study this site and keep doing old exams till the big day… Thanks JP, appreciate it!
Can someone help me with my understanding of Markush group claim writing? I thought using “and” or “or” was proper for a Markush, but according to question 4 on the April 2003 exam the correct answer is B. I was thinking it should be A and B.
According to 2173.05(h) it appears “and” or “or” is proper. Am I reading too much into this? Thanks in advance.
(A) R is selected from the group consisting of A, B, C, or D.
(B) R is selected from the group consisting of A, B, C, and D.
Answers (C) and (D) uses “comprising” which makes them both improper Markush groups.
(E) is also improper because of the improper preamble.
I just studied this one. It’s “consisting” with “and” or it can be “wherein” with the “or”. Section 2173.05(h): “For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper.” Thus, using an “or” where the claim uses the phrase “consisting of” is wrong. Just like using an “and” where the phrase “wherein” is used without the phrase consisting would be wrong.
PatentGrrl said it right. Grammatically, when writing “from a group consisting of A, B, C, OR D,” you are suggesting that there can be multiple combinations of that group, such as ‘A, C, and D’ or ‘B and C’, which is incorrect (it makes the claim indefinite). This is why you are required to write “and”, because it establishes only one group with those elements (A, B, C, D) listed. This is the same concept as being required to write “consisting of” rather than “comprising”.
Regarding the ‘wherein’ method (i.e., “wherein R is A, B, C, OR D”), this phrasing grammatically only allows one combination, which is why this IS appropriate.
Grammar is very important in the patent world!
Took the exam today and didn’t pass. My exam had a LOT of those questions with statements I-IV, and was generally pretty confusing. Does anyone have a good idea on the balance of what should be memorized vs what should be readily available for lookup? Even though I spent a few weeks of preparation, I got the sense that I hadn’t committed enough to memory, although, I’m not sure what good it would have been given the peculiar nature of this exam.
=( I’m sorry. I’ve been following this site for a couple of weeks and I’ve seen your posts, so I know you studied hard. At least you can retake it soon, instead of waiting six months like with the state bars. I’m taking it July 5 and I’ve also only been studying a few weeks with very little committed to memory. I guess we’ll see how it works out.
Took the exam today. Got my preliminary pass on my first try. Got a good bit of repeats. For the most part, I was able to reason my way through the questions that I did not know right off from reading the question.
Firstly, this is my opinion on how to pass the exam. I used an older version of the PLI study materials. Secondly, I used the materials from this website. I found that John White and his study materials formed a good foundation for my understanding and by doing practice problems obtained from this forum I was able to fully understand most of the material.
Thanks to all of those who answered my questions and good luck to future test takers.
I’ll post the repeats I had later because I’m saturated from studying and taking this exam.
Congrats! I’m so happy for you. Welcome to the club ;-).
JP
Got the prelim pass today
Here are some of the questions I remember:
From Old Exams (will add more when I go back through them all again)
2000 Apr AM #17
2000 Apr AM #42
2000 Apr PM #19
2002 Apr AM #49
2002 Oct AM #12
2003 APR AM #26
New Repeat Q:
Spanish Phone
Assignee not of record can sign the SES
Multiplicity
Prolix
Claim using “high”
Lays in Direct contact
Final office action response time (given 3 months and respond in 2)
Tons of 103
Refilling app as 2 different reissue for two different inventors
Filings @ USRO but Spanish and German inventors (receive filling date sent to IRO)
Mirrors reflection is inherent
VELCRO problem
Nonpublication request (45 day window (also from an old exam))
The question where you add up the claims to 147 from an old exam
scale of drawing – no proportion in drawings means it is not a good response to examiner rejection
Trade Secrets and their inclusion in applications – material to patentability
Third party submissions
suspended practioner
PCT error with spelling of word “ccar”
Combination/Subcombination
New Questions
One was about a handle, a shaft, and 6 leather straps on it..not sure if a trial q
will try to remember more as they come to me, but thank goodness for this webpage, such a huge help in the prelim passing. Your all awesome!
Prelim pass here as well. Congrats to you! I also got the handle with the 6 leather straps and several others I had never seen (including one where the app was filed in 2002, issued in 2000 ????) But otherwise, it appears we had very few overlap. I can’t really remember many of my questions (how do people remember so many?) but I’ll keep trying.
I’ve already posted that I got a prelim pass on my first try, 7/5/12, but I wanted to share more since this website is the biggest reason I passed. First, I have a background in engineering, I graduated from law school in 2011, I passed the July 2011 state bar, I have been clerking for a judge for a year, and I will be joining an IP boutique law firm in August. I only took copyright and one IP seminar in law school, but no patent or IP survey courses. To give you an idea on my test taking skills, for the state bar, I did an online only course and studied all day every day for two months, but I was sick the whole time. I did the typical flash card studying. I scored a 147 on the MBE. I don’t think flash cards would help with the patent bar and I did not do any.
For the patent bar, my law firm bought me the 2012 PLI review course. (They’re awesome! Even if I wanted/thought I could sell it, the videos are all online and can be viewed from only two computers, which I’ve done at work and at home, so selling it would be worthless). It was very up to date and did a great job summarizing the new stuff. The only Patware quizzes I did was on the new material (other than the review quizzes and such at the end of each lecture). Between that and the awesome outline on bfusion’s gmail account, I felt prepared for the new stuff.
I then took off Thursday-Wednesday from work and went through every question listed on the repeat questions tab here. I spent at least 20-30 minutes on each question, reading the MPEP section for every right and wrong section. I ended up printing page 700-27 (how to overcome a 102(e) rejection) and 700-273 (situations where 131 affidavits are inappropriate) and memorizing them since so many questions have to do with them. That’s all I memorized. I also went through all 68 questions on the Exam Questions and Concepts tab. Then on Wednesday, I retook the October 2003 exam. But that’s all I did. I put in maybe 100-120 hours studying.
Testing facility: I took the test at Georgia State. It was perfect. There is parking immediately behind the facility for $8.50. It was very easy to find, both the location and the testing room in the building. There’s a lobby where you can eat lunch (I brought mine and left it in the locker) or there’s a place Georgia State students eat at in the building (you have to go out to Piedmont to find the entrance). The temperature of the room was perfect. I get cold easily, so I wore sweatpants and a sweater and I was very comfortable. Someone who gets hot easily would have been comfortable in shorts and a t-shirt. It was very clean. The chairs were comfortable and the monitors were big. The proctors were very friendly. The computer worked great. The only problem came when I double clicked on the title bar to maximize the MPEP. Then, every time I clicked in the document, it minimized. So I closed the window and reopened (took all of three seconds) and it worked great. Opening the MPEP and searching was surprisingly fast. I looked up every question (just about) as I went and had time to spare at the end of both sessions.
One note: I thought I would be able to select questions individually at the end of the session and go back to them. But if they weren’t marked, I couldn’t go back without going through every single question. And for the ones marked, I had to go to the first one marked and go through every one in order. So I was glad I mostly looked up every question as I went.
I’ll go through the website identifying the repeats individually as best I can. The morning felt much more difficult with very few repeats. The afternoon was easier with more repeats. As for new material, I consciously tried to remember the new questions so I could post them here. But I just can’t. I’m sorry! I’ll keep trying to refresh my memory. If someone starts, I could definitely help fill in the details.
Thank you to everyone here! I definitely could not have passed without those six days going through the website.
edit: I only took off Friday-Thursday, taking the patent bar on Thursday. I spent about a week going through most of the PLI lectures in mid-June while my boss was out of the office. So I basically spent two solid weeks preparing.
What is this bfusion excel spreadsheet everyone speaks of?
And how can I get a copy?
Thanks
What is this bfusion excel spreadsheet everyone speaks of?
And how can I get a copy?
X6LX6L@aol.com
Thanks
Were you able to locate the spreadsheet? If so could you email it to cdesai13@gmail.com?
Hello all. I just passed the exam today first try by studying the program from PatBar. I have the entire kit which can be found here: http://www.patbar.com/patent-bar.shtml
The study books are in great condition with no highlighting/marking/tearing. I found the books, lectures, and practice tests very helpful and easy to understand. If you are interested please email me at nathan.mutter@gmail.com. Thanks and good luck to you all!
Hello all.
I just passed the exam today first try by studying the program from PatBar. I have the entire kit which can be found here: http://www.patbar.com/patent-bar.shtml
The study books are in great condition with no highlighting/marking/tearing. I found the books, lectures, and practice tests very helpful and easy to understand. If you are interested please email me at nathan.mutter@gmail.com. Thanks and good luck to you all!
Hi, can someone tell me where I can find PCT rules in MPEP? I Can only find Appendix T which are articles, not rules themselves.
Thank you for your reply. I am taking the exam next Saturday.
Found it. Can’t imagine how I can go to the exam still not knowing this.
For sale
3 Patent bar exam audio review CD: $10 each
3-volume Meeks patbar home study guide book: $150 for all 3 volumes
They helped me pass the patent bar at first try. Please reply me at sellerofdurham@gmail.com
Pictures are available at http://raleigh.craigslist.org/bks/3128724945.html
Thanks.
This site is what I needed for so many reasons. I studied with the PLI home course did not pass. Close but no cigar! After reading these posts I just pushed my exam date back 5 weeks so I can implement some of the suggestions here. I am making this site my new facebook for 5 weeks I will be reading it day and night. I just copied Mambo5 questions and I will go through everyone. Hope to be the next success story!
MT40, I’m using the PLI home course too and practicing on Patware….is the exam much harder even after the PLI course ?
Am also doing PLI. Where are these Mambo5 questions on this site?
Thanks!
Hi everyone, I just passed the patent bar yesterday on my first attempt. Thank you SO MUCH for this site and the repeat questions, they were a big help.
I am looking to sell all my PRG patent bar study materials, purchased for over $2900 in April 2012. Will entertain all reasonable offers. The materials include 5 days worth of lectures online, printed slides in a binder for use with the lectures, an unopened set of Patent Practice – 9th Edition (Volumes 1-3), and ExamWare online to take an unlimited number of practice exams and questions. Please contact me at atk520@gmail.com if you are interested!
Really informative article post.Thanks Again. Great.
Just passed today 8/07/12. First try. Bad news though, almost no repeats. There were maybe 10 that seemed familair. A few verbatim from this site and the rest variations. And I memorized all of the repeats and exam questions. I basically just had to look every question up in the MPEP. Thats the key. I was hoping to rely on repeats but I dont recommend it now. I used the PLI 2006 DVD lectures that I got from a friend of mine. Went through them in a week or so. Then I went through the questions on this site for about a week. Thats all there is to it. The rest you just have to look up. Type keywords into the subject matter index. It will take you to the right place. Lots of PCT, Appeals, Obviousness. I think one of the only repeats i got was the 147 claim counting question. Dont get too crazy with studying. Maybe 1 month max of part time study. Its mostly just look up. I saw some people on here saying they studied for like 100 hours. Way overboard. I figured Id get the exam out of the way before the major changes. Good luck guys.
Hi all,
I’m taking the exam on Sept 12th. With two kids under age 4, am managing about 4 hours a day in studying. Slow but steady…trying not to get anxious over this!
The prometric site scheduled me at 1pm, I find that an odd time, but I guess it should be okay!
I’ve been reading the tips on this site from time to time. Have gone through the new question list. Will do repeat questions in the week before the exam where I plan to do massive amount of exams questions.
Noticed someone mentioning Mambo5 questions, anyone know what that is?
Good luck to all those taking the exam!
VenuSareen, in case you haven’t found them, a user named Mambo5 compiled many of the repeat questions discussed on here into 4 half-exams. S/he pasted them in, and someone else made them available for download all zipped up. I forget where but if you search the site for mambo5 I think you find them easily.
Good luck to you with the exam – I’m taking it this week, also have 2 kids under 4, and have trouble getting more than 6 hours in. I hear you!
Thanks Matty! Good luck and let me know how it goes!
I searched for Mambo5, could not find anything.
Hi Bfusion,
Do you have any contact information? I am very interested in your summaized materials (including spreadsheet, new repeat questions,…). Please contact me by lucaslee9@gmail.com.
Thanks
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Unfortunately, I’m not going to be ready for the exam before the first big set of changes go in at the end of the month. Can anyone recommend a study plan to learn the new stuff?
All:
I am selling my PLI 2012 Patent Bar Review Course Materials. It includes updated AIA material!! Please see the following link:
http://cgi.ebay.com/ws/eBayISAPI.dll?ViewItem&item=150921441993
All:
I am selling my PLI 2012 Patent Bar Review Course materials. This includes updated AIA material! Please see the following link:
http://cgi.ebay.com/ws/eBayISAPI.dll?ViewItem&item=150921441993
Thanks!
To Admin of mypatentbar.com,
We are interested to put Ad on your website. Please contact us by emails to talk a deal. patentbartakers@gmail.com
Thanks
Can Someone tell me please how to study for this exam? I got a friend’s PLI stuff but they are kind of old and I am not sure if it is wise to just sit and read through the chapters. Is it better to start with a practice exam and go from there?
Has anyone reformatted the Mambo5 questions into Word format? If so, willing to email your work to me? I’d save me some much needed time.
Thanks in advance!
safeway at gmail
Hi test takers,
I am selling my 2012 PLI material. It comes with new AIA inserts. I bought it last October. Selling for $500. I studied it for a month and passed the bar on my first try. It’s in good condition as I was very careful with it. Some highlights and notes in the margins. Please let me know if you are interested in buying. Good luck!
~Kevin
wutangfinancial@hotmail.com
Hi Kevin O,
Are you interested in selling a copy of new AIA inserts? I have 2012 PLI material before the change in October.
Thanks,
Just took the patent bar a few days (9 Jan 2013), and failed wonderfully (57%). It did not seem to me that there were very many repeat questions, and seemed very different . It also seemed that every other question dealt with an ex parte proceeding. Anyone have any tips? Also, where can I find info on the AIA questions and things I need to know about it? Also, for anyone just starting out and wanting to get study material avoid PatBar – it’s not very well written and I didn’t think it helped one bit (this site was infinitely more helpful).
Pavlos:
I pulled a off a 43% January 7th. There were few repeats, and all the AIA’s were live not beta questions. Took the PRG course, which is not much better than reading the MPEP. I am just going to memorize the old exams. Even the PRG bar review material is out of sync with the question pool. I guess they were able to keep up with the materials before the exam went into overdive covering the AIA, but now its a really long shot to expect to pass this exam. This site is more relavant that the so called bar review courses, and free! I wasted by time and money taking the PRG course.
Well good luck!
Pavlos:
I’m finding it hard to get information on what AIA questions are being asked. However, the Act itself is decently straight forward. You can download it here (it’s number 10):http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp
I personally wouldn’t bother with anything besides sections 3-10. I’m personally paying particular attention to how the AIA changes 102-103, reexams/post-grant reviews, and third-party submissions.
FYI, most of the AIA questions I got yesterday (1/22/13) were relating to this document:
#15 – “Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012)”
http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp
If you are very familiar with the first 9 pages or so, you should be fine for the Inter Partes and PGR questions. Most were relating to who/when/what prior art can be used for these challenges.
I took it today. I second Moe’s comment.
I took the test today. I posted a few of my recollections here: http://mypatentbar.com/current-questions/#comment-100175
Hi Unipec,
I hope this finds you well.
My name is Luca and I read your comment on mypatentbar.com website.
I would be interested in taking the patent bar exam in order to become a patent agent. I’ve been working for 6 years as a Mechanical Engineer and I never studied law.
Would you be so kind to tell me what you think it would be the best way to approach the study of the subjects required to pass the exam?
Material I should buy, courses on line or in class I should take (it seems this PLI is very useful). I live in Los Angeles, CA.
Your help is really appreciated.
Thanks and best regards,
Luca.
Luca
I noticed your post here on mypatentbar.
I am interested in finding a patent bar study partner.
I live in LA. If you are interested, please email me: mapper@pobox.com
Mitch
What’s up everyone, it’s my first pay a quick visit at this site, and post is in fact fruitful in support of me,
keep up posting these articles.
Anyone have any mnemonics they want to share for preparing for this exam? I’m making my own by typing the first letter of key words into http://www.unscramble.net, but it’s taking forever to create mnemonics
Anyone have any mnemonics they want to share to help memorize all this material? I made some of my own using the first letter of key words entered into http://www.unscramble.net/
For example, there’s no fee to make a petition special for HEROS under 708.02:
H = Health of applicant,
E = Environmental Quality,
R = Reduction of energy,
O = Old folks (if applicant is 65 or older),
S = Superconductivity
Has anyone here noticed a navigation problem using the latest Adobe Reader and the MPEP e8r9 files from the USPTO website? Adobe Reader fails to provide a bookmark for navigating back up to the TOC. So once you push down into a particular chapter, you can’t return to the TOC.
If I use a different set of files (MPEP e8r8 that came on a study course CD), I don’t have this problem — the link back to TOC is there. Wondering if USPTO somehow screwed up their file links.
I am going to take the test early March. I saw there are over 10 new materials on the source materials website. Should I read all of them? Or is there some outline I can rely on?
Thanks!
Most of the pages in the Federal Register documents are “Comments and Responses”, which are not tested. You should read each section up to this point to at least get an idea of where to find information.
Hey guys, i’ve been eyeing this site, and other review material for some time now. I would like to know, do i need to take those 400-500 dollar courses, or are those 50-100 dollar books (http://www.amazon.com/Patent-Fourth-Edition-Aspen-Treatise/dp/1454822449/ref=sr_1_4?ie=UTF8&qid=1361771804&sr=8-4&keywords=patent+bar+exam+prep) is enough?
i’ve always been good at standardized tests, had near perfect score SATI, and perfect scores on SATIIs, also got 3 or above on 11 Advance Placement tests. I am a recent electrical engineering graduate out of work, looking to expand possibilities.
I also live in Northern California. If anyone knows how the employment prospects for new patent agents are, that would be helpful. thank you all
Hey Joe,
A few questions for you:
1) When are you looking to take the exam? If you have all the time in the world (meaning, 6-8 hrs a day to study) for 2 months or so, you probably can get by without much. If you’re in more a time crunch, we’ll, that’s where paying for materials (people who have spent time and effort condensing materials, figuring out what’s being tested, helping you streamline your studying process) comes in. It’s a trade-off (or can be…). $$ for time. But on top of that, you are paying $$ to help you focus and in some cases, get personalized feedback and help along the way.
2) I can’t speak to the $50-100 resources from amazon / print resources. I’m sure some of them are “good” but you aren’t going to get a whole lot more than say online help on sites and forums.
Not sure if you saw the other site (http://www.wysebridge.com/index.asp ), but that site I set up to try and build upon what others had laid out, organizing material, analyzing questions, repeats, creating summaries, question testers, etc. All stemmed a lot from me not wanting to pay $1k+ for materials, but also having some free time to slowly sift and sort through all the material online and my own resources. There are a bunch of free resources (and paid resources as well).
If you have any questions about studying, or even pricing of the materials, feel free to contact me! bfusion.uspto@gmail
All the best to you as you study!
Hi test takers,
I am selling my 2006 PLI materials, which come with the MPEP 8th Edition Revision 4 to Revision 8 update. These materials and the AIA material on this website are all you need to pass. Willing to sell for $300 or best offer. I watched the PLI DVDs, studied this website for a month, and passed on my first try. The PLI materials are in very good condition. Some highlights and notes in the margins. Let me know if you are interested. Good luck!
~Kim — kimvito@yahoo.com
Tremendous issues here. I am very satisfied to look your article. Thanks so much and I am taking a look ahead to contact you. Will you kindly drop me a e-mail?
Hello all,
I have a question regarding the recently enacted Leahy-Smith America Invents Act which was signed into law on Sept. 16, 2011 and changed the U.S. from first-to-invent to first-to-file. The first-inventor-to-file provisions become effective on March 16, 2013. The USPTO site says that as of last month (April 2, 2013) there will now be questions added onto the Paten Bar including this new law. Can anybody point me in the right direction on this website (or any other site) that might show us samples of what those test questions look like?
Thanks in advance,
HTP
Thanks for the response and the help. Just to be clear, the AIA beta questions that appeared pre-April 2 are available in your free or pro version?
Hi, HTP,
The AIA beta questions are available with a Wysebridge PRO membership. As we continue to grow and expand our databases, we’ll begin to put some samples into the free portion of the site, but for now, these resources are exclusively for PRO members. We also have exam questions written sourced from and testing AIA changes as well, to help test-takers further learn the material.
Glad to be able to help!
~Bfusion
Selling my 2013 AIA updated PLI materials for $1k. Reply @ neco_jineho@yahoo.com
whats the new materials contain? CDs? folders?…etc.
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Has anybody head about http://www.taprecourse.com/home course? It is only $249? Looks like too cheap to be good. Wanted to know if anybody has any experience with it?
I have just started exploring to study for the exam and on a lookout for the best course. Dont want to spend too much (PLI).
It’s a pity you don’t have a donate button! I’d certainly donate to this excellent blog! I suppose for now i’ll settle for bookmarking and adding your RSS feed to my Google account.
I look forward to brand new updates and will share this website with my Facebook group.
Chat soon!
For past test takers, will the exam will have the Federal Register publications available for searching (i.e, for the new AIA enactments)?
I’m presuming the answer is “no.” Then, for information being tested in those publications, will just have to be memorized as they have yet to make their way into the MPEP, right?
Federal Register will be available.
I am actually grateful to the owner of this website who has shared this enormous post at at this time.
Has anyone downloaded the MPEP to a Kindle? The regular one, not the Kindle Fire. There’s a searchable one available for the Kindle. I’m wondering how useful it is. Or should I just try to download the pdf files from the USPTO site to my Kindle?
Hi.. I am prepping to take the Pat Bar around mid Oct. Anyone looking for a study buddy in the NJ shore area, or otherwise by telecommuting?
Thanks
Hi test takers,
I am selling my 2006 PLI materials, which come with the MPEP 8th Edition Revision 4 to Revision 8 update. These materials and the AIA material on this website are all you need to pass. Willing to sell for $300 or best offer. I watched the PLI DVDs, studied this website for a month, and passed on my first try. The PLI materials are in very good condition. Some highlights and notes in the margins. Let me know if you are interested. Good luck!
Thank you
Email:shamareet@gmail.com
Quick question: Has anyone used several types of study materials? If so, please discuss pros and cons. I have seen several mentioned.
Hi CW-
I can gladly put you in touch with a few individuals who used several different study programs.
*caveat* these are individuals who came to Wysebridge after trying to use other study courses (take your pick of course), and told me to use them as points of references when it comes to highlighting differences between other study programs (and why they were successful with Wysebridge).
All the best!
~Bfusion
http://www.wysebridge.com/
I have PLI 2013 with the new AIA for sale. If interested contact me at Kansasman2014@yahoo.com (I passed the exam in January 2014)
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Hi everyone,
This is my tribute to the people who put efforts in creating this webpage, which is a rich resource for preparing for the exam. Yesterday I took the exam (for the second time) and I passed. Such a relief! Here, I would like to share my experience to offer others a good chance to prepare and quickly pass the exam. What you need to know for the current exam are MPEP chapters: 700, 1200, 1800 and 2100 (PLI course covers this part), from AIA law: differences between old and new oaths, differences between 3rd party submission and protest as well as differences between post grant, ex parte and inter partes review/reexam procedures.
Here are some specific examples that I saw:
– certificate of mailing (relative to bar date or lost application)
– restriction requirements
– filing IDS after allowance without RCE
– appeal brief content
– use of 1.131 and 1.132 for 102 and 103
– enablement vs best mode
– enablement and written description rejections for chemical formulas
– partial assignment to company, inventor dies, who continues prosecution
– examiner’s request of IDS
– patent term relative to international application filing date
– consisting vs comprising
– 30 days meaning
– use of discs for sending over 50 pages long tables
– filing date for application filed by (non-US citizen) authors at US/RO (check if country is within PCT)
-1 year restriction for filing inter-partes review if party sued for infringement
– Oath can be signed by minor
– new AIA oath does not require citizenship and “first inventor” statement
Finally, make sure that you get Wysebridge’s list of new questions. I saw more than 20 questions from there.
Best of luck to everyone!
Ella,
Congrats on the pass! Well done, and all the very best to you as you enter this next phase of your career!
Glad Wysebridge Patent Bar Review was able to help you out along the way!
Best,
Bfusion
http://www.wysebridge.com
NON DISCLOSURE AGREEMENT: General Disclaimed/Warning/Heads Up
Hey all-
This site used to be the place to share information about the exam, and probably what was most valued, actual feedback about the exam (meaning, questions seen, etc).
Due to the NDA that you now have to sign…which includes this:
“You are expressly prohibited from disclosing, publishing, reproducing, or transmitting the content, or substantially similar content, of this exam, in whole or in part, in any form or by any means, verbal or written, electronic or mechanical, for any purpose. By clicking “Yes” below, you agree not to disclose, publish, reproduce, or transmit the content, or substantially similar content, of this exam, in whole or in part, in any form or by any means, verbal or written, electronic or mechanical, for any purpose.”
Depending on how the USPTO interprets this, mentioning “I saw X question” could break this NDA….and, they could even crack down on saying “hey, appeal questions were on the exam a lot” because they could say “you are transmitting content if the exam”
While I know we’d all love to be able to talk about the exam experience and help out, just a friendly heads up that posting material / content from your exam is a risk….
Alright, all the best guys. I hope this didn’t sound harsh. It’s just the lay of the exam landscape currently…
~Bfusion.
how to pass plus SNQs on USPTO
USPTO training
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Hi All,
Just want to see if anybody here has experiences with Category B application and how to certify the degree completed outside the U.S.. I am applying for admission to the bar exam, but got a notice from USPTO, which requested “official course description” and foreign education evaluation.
Thanks and your help would be highly appreciated.
How can I remove a post from this website?
I do not see any option fore editing or deleting an old post.
Who is in charge of this website? Is there an email address to contact the admin?
If you have any suggestion please answer my questions. I would very much appreciate it.
HI All,
I have PLI Patent Bar Exam Home Study materials for sale. It’s the newest updated post-AIA version and I passed the exam in January. If interested, please email me at kansasman2014@yahoo.com
Dumb question: How is this entire site not in contention with the non-disclosure policy of the exam?
Also, I just failed the exam. Is the unofficial score ever bumped up? Has it already removed the 10 experimental questions in its calculation or is it just raw? I was close.
Finally how do I reschedule. Does that come in the letter they explain later?
Hey Peter,
This site launched a number of years back, prior to the NDA part of the exam/pre-req to take the exam. That said, as you can probably see, the amount of people talking on here has dropped a LOT since the exam changed.
The unofficial score (to my knowledge) is never bumped up. In the past, you used to be able to contest a question, and try to have your score raised (but you are no longer able to do so). And yes, the score you saw already removed the 10 experimental (unscored) from the calculation.
Rescheduling/re-taking…. you can do so on the Prometric Website (the instructions will be in the mailing/letter).
Anything we/I can do to help, please let us know!
All the best,
Bfusion
Wysebridge Patent Bar Review
http://www.wysebridge.com
PLI patent bar materials available (I just passed). No writing on any pages, bought new three months ago, $700. Email me at uwave_notes@yahoo.com
Much AIA on your test? How many repeats would you say?
I read from the other forums that you have passed. How was the test like ? Any repeats ?
Just took it yesterday for the first time (4/28/15) and passed! It was quite crazy, I didn’t expect to look up so many things. Many random things. So my best advice are the following:
1. Take at least 3 full exams under exam conditions (preferably 2003/2002 exams), develop your own strategy for looking up the MPEP, and revise that strategy based on your own experiences. Figure out the quickest way to find something. I had to revise my strategies during actual exam from AM to PM, since you just don’t know how you will react to the real thing.
2. Memorize those old exams and especially the repeat questions, maybe do them 2 days before your exam again, because when you see them, you will love them, and you will spend only a few seconds making sure nothing has changed, pick the answer, move on. Even though there were not as many repeats, whatever I saw helped me tremendously in freeing up more time to look up something else. After that experience in the AM, I reviewed one of the old 2003 exams during lunch and what do you know, I got several from that exam.
GOOD LUCK!
Thanks for the post! Did you follow any course? what was your studying strategy?
Hey! If anyone has old prep materials (PLI or whatever) they are willing to sell on the cheap lemme know!!
luxuriousmind42@gmail.com
Hi all,
I have PLI material from 2013- and I know a lot has changed in the last year, namely that the exam now tests on the new version of the MPEP. Has a lot changed substantially? what is the best way to study for this without having to sign up for a new course? Also is there anyone in the SoCal area who wants to study for this with me? I live in South Orange County.
Thanks
Hi KariG,
Yes…the exam (and material(s) tested) have changed dramatically since 2013.
From more content/rules/laws that significantly impact the prior MPEP (and thus significantly impact how you would answer a question), to more exam questions testing that new material.
If you don’t want to sign up for a new PLI course, you have a few options:
1) you can work through the USPTO website and try and learn the AIA material using the various resources there. That said, there is a LOT of info…and it’s not necessarily laid out the most straightforward.
2) you can try and glean info from other sources/posts/law firms online (again, time consuming to say the least)
3) Wysebridge Patent Bar Review has an updated AIA study suite (with an AIA test question database) that is available to PRO users (and there is a discount available as well).
All the best!
– Bfusion
http://www.wysebridge.com
Hi, is it possible to get just the AIA study suite for less then the full price of Wysebrdge PRO?
Thanks
Hello all, I just got confirmation from the USPTO that I can sit for the exam. I can’t afford the $2800 bill for the PLI course, and would like to know I could rent the material from anyone that has the PLI (or equivalent) material. Thanks -Sam.
Hi,
Where exactly in the v9 MPEP do I find the post-grant review, inter party, covered business methods material? also, where do I find the KSR and Bilski material? is the post-AIA Third Party Submission and Citations of Prior Art under 1900? for the first-to-file AIA revisions to 102, is there anywhere that it is consolidated or is it just scattered through 700 and 2100?
Thanks.
V9 Does not include PGR and IPR and BM. I found these in supplemental files from USPTO.
37 CFR Parts 1, 5, 10, 11, and 41
[Docket No. PTO–P–2011–0072]
RIN 0651–AC66
37 CFR Part 42
Changes to Implement Inter Partes Review Proceedings, Post-Grant
Review Proceedings, and Transitional Program for Covered Business
Method Patents; Final Rule
Vol. 77 Tuesday,
No. 157 August 14, 2012
Plant Patent Law Clerk
Arnold & Porter LLP
Arnold & Porter LLP has an opening for a Patent Law Clerk in the Washington, D.C. office. The Patent Law Clerk will be directly supervised by an attorney and get individualized patent law training. Ideal candidates will be organized; detail-oriented; and able to follow up on instructions independently. Responsibilities include: preparing and filing new patent applications and other patent prosecution documents; conducting client technology and patent portfolio assessments; supporting business development; managing large domestic and foreign dockets and other duties as assigned.
Candidates should have an advanced degree, preferably a Ph.D., and significant graduate level experience. Training in the fields of plant biology, genetics, microbiology or entomology are preferred though candidates having experience in other biological science fields also will be considered. Research experience in RNA silencing, genome editing, microbiomes, or quantitative genetics is desirable. Successful candidates will have excellent academic credentials and strong verbal and written communication skills. The ideal candidate will have passed the Patent Bar. Law school or prior legal training or enrollment in law school is not required. Benefits include a competitive salary and a tuition reimbursement program when applicable. Please include a cover letter, resume, school transcripts (please include each school), and writing sample with your online application.
Arnold & Porter is an equal opportunity and affirmative action employer that does not discriminate on the basis of race, religion, color, national origin, sex, veteran’s status, age, disability, sexual orientation, gender identity, genetic information, creed, citizenship status, marital status, or any other characteristic protected by federal, state or local laws. Our Firm’s policy applies to all terms and conditions of employment. To achieve our goal of equal opportunity, Arnold & Porter maintains an affirmative action plan through which it makes good faith efforts to recruit, hire and advance in employment qualified minorities, females, individuals with disabilities and protected veterans. If you would like more information about your EEO rights as an applicant under the law, please click EEO is the LAW and the Supplement poster. Arnold & Porter LLP is an EO Employer – M/F/Veteran/Disability
CLICK HERE TO APPLY: http://www.arnoldporter.com/jobs.cfm?u=PatentLawClerkPlant&action=view&id=723
Arnold & Porter LLP has an opening for a Patent Law Clerk in the Washington, D.C. office. The Patent Law Clerk will be directly supervised by an attorney and get individualized patent law training. Ideal candidates will be organized; detail-oriented; and able to follow up on instructions independently. Responsibilities include: preparing and filing new patent applications and other patent prosecution documents; conducting client technology and patent portfolio assessments; supporting business development; managing large domestic and foreign dockets and other duties as assigned.
Candidates should have an advanced degree, preferably a Ph.D., and significant graduate level experience. Training in the fields of organic chemistry, chemical engineering, biochemistry, and pharmacy (particularly formulation development) are preferred. An ability to handle additional technological areas such as the biological sciences is a plus and should be noted in your application. Successful candidates will have excellent academic credentials and strong verbal and written communication skills. Law school or prior legal training or enrollment in law school is not required. Benefits include a competitive salary and a tuition reimbursement program when applicable. Please include a cover letter, resume, school transcripts (please include each school), and writing sample with your online application.
Arnold & Porter is an equal opportunity and affirmative action employer that does not discriminate on the basis of race, religion, color, national origin, sex, veteran’s status, age, disability, sexual orientation, gender identity, genetic information, creed, citizenship status, marital status, or any other characteristic protected by federal, state or local laws. Our Firm’s policy applies to all terms and conditions of employment. To achieve our goal of equal opportunity, Arnold & Porter maintains an affirmative action plan through which it makes good faith efforts to recruit, hire and advance in employment qualified minorities, females, individuals with disabilities and protected veterans. If you would like more information about your EEO rights as an applicant under the law, please click EEO is the LAW and the Supplement poster. Arnold & Porter LLP is an EO Employer – M/F/Veteran/Disability
CLICK HERE TO APPLY: http://www.arnoldporter.com/jobs.cfm?u=PatentLawClerkChemist&action=view&id=724
Hi,
If anyone wants to have a study buddy to review concepts or go over questions by phone or Skype, I’m definitely in. I’m on the East Coast and taking the exam at the end of Feb., so I’ve got a few months of prep under my belt. Happy studying.
Hello Roxie,
In case you’re still interested in having a study buddy, we can discuss on google hangout. Thanks,
Meilin
414 243 2550
Post AIA ?
Inv A filed an app Mar 22 ’13. Examiner cited foreign pat app filed Mar 16 ’13. that was never filed in US. Is foreign pat appl prior art.
Priority date is set from 1st filing of pct or US non provisional.
Secret prior art (102e) does not appl. So prior art date starts at 1st publication.
Is this correct?
As of today, I have managed to fail the patent bar twice in about 80 days. I could vomit (ugh). I used OmniPrep the first time around, but definitely found the same problems with that material as others who have posted above. I even contacted them regarding the quality of the content in relation to the current exam and they told me to go to the I.T. department if there was a content issue (whhaaaa?). The refund request that I sent in according to their guidelines has still not been fulfilled.
The second time around I used Patent Education Series and I felt like I was in good shape with the material and simulation exams, but I actually scored worse than the first time. I am at a loss right now. I will read through the comments for advice but if anyone can offer any guidance at this point it would be greatly appreciated.
Sincerely,
F is for…
I take my exam in 2 weeks. Your experience really scares me. There is so much wrong with omnipresent I am not sure where to start. Simple things like claims are no longer required to get a filing date on a non provisional. Others like outdated correct answers on the sample tests.
I am in process of actually reading the mpep, and hoping I can identify enough of the errors beforehand.
Also a little disappointed there is not more info sharing on this site for mpep 9 questions and answers. Maybe there is anouther more active site I have not found.
I need help for solving the question below.
A inventor filed Australian patent on 06/15/2012. The inventor started offering sell his invention on 06/21/2012 in Sydney, then started to use his invention on 07/20/13 in California. He finally filed a US application on 07/31/2013.
Which is the following sections of 102 prevent patent from issuing base upon the above fact?
A) pre-AIA102(a),
B) AIA102(a),
C) pre-AIA102(b)
D) AIA102(b)
E) none of the above
Answer is B, AIA102(a) (sales activity was happened before the US filing date).
However, I am wondering about D, AIA102(b). AIA102(A) will not be applied if 1) the same inventor and 2) one year grace period.
Both Sales and Australian patent are done by the same inventor. But both are happened more than one year prior to the US application filing. So, I am wondering the answer is AIA102(b) instead of AIA 102(a).
Could some one explain to me why the answer is AIA102(a)?
Thanks,
The offer for sale in Sydney occurs more than 1 year prior to filing the US app thus doesn’t qualify for the AIA102(b) exception. You seem to be mixing pre-AIA and AIA 102 requirements for prior art. Only AIA 102(a) creates a bar, AIA 102(b) provides exceptions. However if the US app had been filed prior to 16March2013 (pre-AIA) then there would be no 102 bar in this fact patern as the offer for sale more than 1 year before filing occurred outside of the US.
Does anyone have PLI with access to the online lectures for sale? I’m hoping to take the exam this summer. Thank you!!
selling mine for 600 its from January 2016, I took the exam in march 2016 and passed on first try, average scientist, no law experience
Hey! I’m sorry I’m just now seeing this, I never got a notification of your reply. I’m interested in buying. Do you have an email or an e-bay link you are selling it from? Thank you!
Anyone selling PLI materials? I’m in need ASAP!
I am looking for a Patent Bar tutor! email me if interested: BLawyered@outlook.com
I took the exam in April and did not pass. I am considering signing up for the Q&A review session for $195… has anyone done this??? Is it worth it?
Thanks!
I just passed the patent bar last week, and I thought it would be good to “give back” and offer future test takers a few words of wisdom. I am not an extraordinarily smart person, and I generally have to study extremely hard to achieve good grades. This test was no exception. So here are a few study / test taking tips. Please note that prior to taking this test, I had several patent law courses in law school.
1. If you are going to be a patent attorney don’t bother taking this test during law school. Instead take a few courses in patent law. This will help you out tremendously with your understanding of MPEP 2100. Still, the patent law courses I took in law school, while helpful, were not enough to get me though this test…you will need to do more. A lot more!
2. If you don’t have a photographic memory, get PLI. There are a lot of different “cheaper” alternatives, but none of these measure up.
3. Go though the entire PLI course videos and then spend a lot of time in PATWARE. Do EVERY SINGLE question at least once. After you go through a series a questions, go back and review every single answer, EVEN IF YOU GOT IT RIGHT!. After you have completed the course videos, I would do 20-50 questions / day and then spend the remainder of the day reviewing topics that you are weak in. You need repeated exposure to the MPEP. However, don’t bother reading the MPEP like a book (the PLI folks suggest this. I couldn’t think of a more horrible waste of time). Instead, go back and read the MPEP sections as you review your multiple choice answers. This will give you practice looking information up and it provides a more reasonable/realistic approach to “reading” the MPEP.
4. Plan on completing all of the PATWARE questions one week prior to the test. Then, come to this website and review the old exam questions. Keep track of the repeat questions that you get wrong (or got right by luck). Go over these repeatedly.
5. Make sure that you don’t spend all your time in pre-AIA 102. Know the new 102 and its mechanics VERY well. Know reissue very well. Know appeals very well. Know PTC very well. Know restrictions very well.
6. When I took the test, I had to do a lookup about every third question. However, this was a choice I made by design and had thoroughly practiced before I took the test. If you take this approach, memorize check point times: At 10 questions the time should be: 2:24, 20 questions: 1:48, 30 questions 1:12, 40 Questions 0: 36. Some questions will take longer to answer than others. Don’t rely on PLI’s average time/question stuff…you will not have this during the exam.
7. When you are looking up questions in the MPEP during your practice, use the built in table of contents feature in adobe to quickly go to an MPEP subsection.
I followed these steps on my first try and I passed. I spent about 3 months preparing, 4 – 5 hours per day about 5-6 days per week. The week before the test, I ramped up my preparation to about 7 hours per day.
https://youtu.be/ZXsQAXx_ao0
Hi Andrew,
If you still have your PLI course materials, I am interested in purchasing them. Can you leave me contact information?
Hi,
I’m looking for some help – the problem I’m having is memorizing all the timelines etc (how long you have to reply to an appeal etc etc). Does anyone have any good summary for studying all these different timelines.
Thanks in advance,
Sarah
Sarah.Hooson@gmail.com
I am selling my 2016 PLI Patent Bar Materials. It is recently purchased and has all the most up to date supplements. I passed my exam and don’t need it anymore. I can add flash cards I prepared if needed. Email me at cubing98 (at) gmail (dot) com.
Also posting here to “give back” and/or “pay it forward” after taking and passing in August 2016. I found many of the posts here helpful before I took the test so hopefully my comments will add to the general community knowledge.
I am entering my third year of law school. I’ve taken general courses in patents and patent drafting. They were pretty helpful in understanding how to apply 101/102/103/112 and understanding the differences since AIA.
On a whole, I studied a few weekends before the exam going through all of the old tests from 2002 & 2003. If I didn’t know the answer I would look it up in the MPEP. As I was studying, I made multiple slide decks in order to save my work and quickly be able to go through questions & topics as the test approached. I posted these slides to slideshare here:
http://www.slideshare.net/BradleySands/patent-bar-outline
http://www.slideshare.net/BradleySands/patent-bar-practice-questions-october-2003
http://www.slideshare.net/BradleySands/patent-bar-practice-questions-april-2003
I did not take a study prep class. I don’t think you need one (if you’re a current/former law student), but I do recommend putting in the work. However, ff you don’t know what a statute is, then definitely get a course.
The test is LONG so be mentally and physically prepared. Red bull, pack a lunch, mindfulness exercises. It’s a grind. Good luck!
Thank you,Andrew!!!
I passed the exam in late September 2016. I did not have PLI but I think Andrew (post # 754) points out perfectly what needs to be done. Aside from the YouTube link to Shia La-Bitch (sorry for being a hater but I find him to be a total douche), Andrew has really good advice for a 3-month time frame to pass. In all fairness, Shia’s advice is spot on.
My studying was spread out over 6 months where there were patches of times when I was not able to study. I DO NOT recommend doing that. If I focused like Andrew did in post #754, I would have been ready in 3 months to take the test.
OMNI prep is wretched beyond reason while PLI is very good. I have seen the PLI materials and they are top notch. I did not have the money for PLI. =(
I don’t know about the PatBar or the other courses.
Oh and if you don’t pass the first time, just take it again. It is a tough test so there is no shame in not passing the first time. It is a tough test which requires preparation but it is still completely doable.
Thanks so much for sharing your slides, @Brad!
Thanks Andrew! Very helpful comment.
Hello … I am starting off preparation for Bar exam and would greatly appreciate if anyone would want to sell or donate (better) your study material that is no more of need for you? Please email at patbarexam2016(at)gmail(dot)com
Thanks,
Bill
@KAORI
1.Look at the date of filing in the US- to determine if we apply pre or post AIA- with attention to whether the app is filed claiming priority to an earlier filed app- this is very important in order for you to determine pre or post-AIA.
2.Date is 3/16/13- apply AIA
3. post-AIA; 35 usc 102 will provide you with two fundamental scenarios under (a)-PAY attention to upper and lower case- they will guide you as to methodically apply the exceptions.
4. (a)(1) will be the applicable scenario, (b)(1)(A)(B)- provides with the only applicable exception “DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION”. Look at the date again and you will see that the disclosure WAS NOT MADE 1 YEAR OR LESS..
NOTE: always make sure to read thoroughly the call of the question- in order to know WHAT are you looking for. The question already is guiding you to the AIA section to look: BAR when it says ” which section… PREVENTS.. the patent from issuing”. Hope this helps! If there is any mistake anyone who reads please correct me. I am in the last stages of preparation-waiting….. patiently for PTO to mail my tix! HAPPY STUDYING!
CORRECTION:
#2
Date of filing is 07/31/2013 and AIA threshold requires on or after March 16, 2013- apply post-AIA.
Andrew-
Reading your post helps with the preparation. If I do the math right, you ended up studying a total of 297 hours (4.5 hours/day X 5.5 days/week x 12 weeks). Though that is dependent on multiple factors, do you mind telling me what was your experience in Patent Law prior to begin studying? I think that would help me plan my time… Thanks…
I’m selling a current PRG Course binder. Please make an offer at: solutions@10e5.com
Hi, I’m just starting my exam prep, I have ~7yrs experience doing patent research (validity/patentability/freedom-to-operate searches mainly) for law firms. I feel pretty solid on patentability in general and 102/103 knowledge with respect to prior art although I’m no 100%, but I’ve read tons of claims, and USPTO examination file histories etc. I understand there is plenty that I’ll be tested on that I don’t know yet, but would anyone who has taken the course still strongly recommend taking the PLI live course rather than home-study? Or think it wouldn’t help much if I’m able to put in the time studying on my own? Please don’t reply to this (or at least indicate) if you’re affiliated with PLI. Also, if I don’t take the test I’m in the market for some used study materials if anyone is selling a recent set. Thank you!
Hi All,
I have 2106 PLI Patent Bar Exam Home Study materials for sale. It is recently purchased and has all the most up to date supplements. I passed my exam and don’t need it anymore. Please contact ashleyjieliu(at)gmail(dot)com
Just took the Patent Bar on Thursday and failed with a 68%. Has to be my most frustrating day ever. Will wait the 60 days and go again. I did PatBar which frankly is not very good for review. I ended up just reading the MPEP summaries a bunch and doing as many questions as I could.
For those of you taking it, it’s ALOT of PCT, reissue, and appeals.
Goodluck. I’ll check back in 60 days hopefully with a pass!
Hi,
I was always denied a refund from OmniPrep. I strongly encourage you to report them to the Federal Trade Commission (as I have), as if enough individuals complain, the FTC could pursue the case and secure refunds. You can submit your complaint here: https://www.ftccomplaintassistant.gov/?utm_source=takeaction#&panel1-1
Sorry to hear.
I’m looking for used PLI material, as recent as possible.
Please email me at s70newark at gmail, if you have the material for sale.
Thanks much!
I have all of the print materials from PLI form 2016. email me at bawhitworth5 at gmail if you are interested.
Hi I’m looking for used PLI material, as recent as possible.
If you have one please email me: valiaev.aa at gmail
thanks!
I am looking for PLI home study used material. I prefer to buy 2017 material. if you have email me at sohanab20@yahoo.com
Hey everybody!
I just passed the patent bar on Saturday (4/14/18) and I have a TON of study materials that I would like to get rid of. I have a 2016 PLI study guide, a summary of the MPEP from Omniprep, three volumes of questions from Patent Education Series (full disclosure though some of these are repeats and I did find some errors) also I have over 300 flashcards that I bought from Amazon that are really good!
Email me if interested: jackie131994@yahoo.com
If I can pass that test, anybody can! (I’m a 23 year old with a bachelor’s in Biochem and worked as a patent paralegal for 2 years). Study hard and know what to look for in the MPEP, some of the questions are insanely specific but if you at least know what section you need to be looking in, it will make a world of difference!
Also make sure you know 102 and 103 like the back of your hand! Know the solutions for overcoming these rejections or at least know where to look for them. Good luck!
Hi, I was wondering if the USPTO returns official transcripts after you apply to take the test?
Also, does anyone have any experience in applying whilst waiting for a green card? I’m currently on work sponsored H1B but have applied for a green card through marriage and I will be getting an employment authorization card which will allow me to work anywhere.
Advice is appreciated,
Thanks!
Just passed the exam ! April 28 2018. On my second try.
I wrote a detailed guide called
HOW TO PASS THE PATENT BAR WITHOUT A COURSE
on my website! The guide should help anyone who has no idea where to start and is on a budget. The link is
http://www.adrianmederos.com/2018/05/how-to-pass-patent-bar-without-course.html
I wrote about tips and advice for others taking the exam!
Also selling the 2016 PLI study guide for $300. It’s everything you need to pass. Reach out if interested I@AdrianMederos.com
Hi, I’m looking for used PLI material, as recent as possible, prefer 2017 or 2018.
If you have one please email me: gemma.sipo@gmail.com
Thanks!
Selling my PLI 2017 book. Email me at mackygood[at]gmail.
Is this still available?
Looking for any study material. Taking the exam Aug 3. Just starting to study now. Anyone have a study plan/schedule? Email me at Elena.Gulkarov@gmail.com
Thank you!
Looking to buy a study guide.
If anyone has a study plan or schedule- please share roselynxx@gmail.com
Elena – did you get one yet?
Hi,
I am selling my PLI 2017 study guide. contact me via ssrv99 at gmail
Hi, I left you an email
I just gave my exam (first attempt) – 57% .. I’ll give another shot soon.
Topics tested (whatever I can recollect) – AIA (alot!), appeals, reissues, IPR, ex partes, preAIA-AIA transition, secrecy, PCT (alot), foreign filing license, PPH, some on continuation/divisionals, depositing evidence.
Anyone looking to sell their PLI, I’d be interested.
Would anyone have a copy of the PLI that I could have? If so, could you contact me at jcha9511@gmail.com. Thank you so much!
Hello All,
Has anyone take the exam since the change over on the MPEP? I’m taking the exam in 2.5 weeks. I’d like to know what topics came up frequently. Thanks!!
Would anyone have a copy of the PLI that I could have? If so, could you contact me at paul30345@gmail.com. Thank you so much!
Hello,
I am selling my PLI 2017 Study Guide. Contact me at tjfox4L[at]gmail
Left you an email. Thanks.
Hi, does anyone have any recent experience with PatBar?
Thanks
I took my exam last Saturday and passed. I thought the morning section was difficult. You need to be fully familiar with AIA and should not have to look up in MPEP. It was heavily tested >30%. Reissue, appeals, PCT, KSR, all well tested. I had three questions in ethics. One in plant, one in design. This was my fourth time. I should have passed on my third attempt. Did not pay attention to the negative questions. This time, I did. Last four months were very intense and I have a full time job. I am still decompressing. Best of luck.
Hello,
Just passed the exam last week and I’m selling my PLI 2018 study guid. If Contact me at
heejinkim880@gmail.com
Thanks.
Hello, How much do you want for it? do you have patware too?
Looking to buy a PLI study guide, preferably 2017 or 2018.
Send me a message at seokwonkr@gmail.com
I just passed my patent bar today. Not my first time. After my full time job, I spent rest of my days studying for the exam. I am willing to part with my study guide and associated materials I gathered for a reasonable sum. It was a 2015 guide, updated.
Hi Raj,
Would you be kind enough to share some of your take aways from the exam and may be point to some questions you got?
thanks!
One of the key lesson from my earlier exams was that it is impossible to rely on searching the MPEP for answers! The search engine is slow, and I could not even see the index page. It was blurred. The testing center said it was not the fault of prometric center either. Problem is with the USPTO. As much as possible, you should know the answer without searching. It is all AIA questions. You should be familiar with timelines and looking for whether it is pre-AIA or AIA application and which law to apply. I had one pre-AIA. I had three questions from ethics. Luckily, they were from my previous exams and I looked at the answers. My morning was very difficult and I thought I would flunk again. I did not have time. The afternoon was very good and I had 30 minutes left to review the answers. If you are using PLI material, go through the Patware. I had almost 10 questions from the released exams! Email me at Nagarajan16209@gmail.com.I will be glad to help.
Hi
I’m looking to purchase a 2018 PLI study guide. Plz contact me via email if you are interested in selling one.
Best regards
Hello, could someone answer this question?
Stanley Thaddeus Wojciehowicz is the inventor of an improved, combination coffeemaker/motion detector, which is useful for making better than mediocre coffee and doubles as a home security system. He first files a patent application in Poland on February 28, 2012. Subsequently, he files a patent application in the U.S. on February 27, 2013, which claims the benefit of his Polish filing date. The Polish application publishes on August 28, 2013, and the U.S. patent application publishes on August 29, 2013. The Polish patent is granted on March 14, 2014, and the U.S. patent is granted on October 22, 2014.
On November 1, 2014, Carl Levitt files an application claiming a combination coffeemaker/motion detector with integrated radio.
Which of the follow dates is the earliest date the Wojociehowicz disclosure will be prior art to Levitt?
A February 28, 2012.
B February 27, 2013.
C August 28, 2013.
D March 14, 2014.
E October 22, 2014
The answer sheet says A, but why? It’s pre-AIA, so it shouldn’t take priority date from a foreign application.
I say it’s B.
same as:
Arnold Horshack is the inventor of a new and improved turkey call, which he conceived and reduced to practice on January 30, 2012. The device creates the most obnoxious sound, which approximates a wheezing hyena. Field studies show that turkeys appear to be drawn to the noise out of curiosity, or perhaps pity for what sounds like a dying animal. Horshack files a patent application in Canada on April 1, 2012, and on May 1, 2012, he files a U.S. patent application claiming priority to his Canadian filing date. For financial reasons, the U.S. application is expressly abandoned on July 1, 2012. The Canadian application publishes on October 1, 2013.
Freddie Washington files a U.S. nonprovisional patent application on November 1, 2013, which relates to a turkey call that approximates a wheezing coyote.
Which of the following would be the earliest date the Horshack disclosure could be used as prior art against Washington?
A January 12, 2012.
B April 1, 2012.
C May 1, 2012.
D July 1, 2012.
E October 1, 2013.
It’s E. but based on that logic they used under 35 U.S.C 102(d), it should have been B.
My answer is C.
Hi, I’m studying this section right now myself. I think the question isn’t asking for the effective filing date specifically but the prior art date:
706.02 DETERMINING THE EFFECTIVE FILING DATE OF A CLAIMED INVENTION “In examining applications subject to pre-AIA 35 U.S.C. 102, the effective filing date is the filing date of the U.S. application”, “although the filing date of the foreign priority document may be used to overcome certain references. See MPEP §§ 706.02(b) and 2136.05”. It’s a tricky one, Hopefully there won’t be many of these pre-AIA on the exam!
Ok. I figured it out. In pre-AIA, 102(e), U.S. patents, U.S. published applications, and PCT applications (on or after Nov 29, 2000) designating U.S. and published in English, will get earliest U.S filing date or international filing date IF THE U.S. APPLICATION PUBLISHES.
So in question 1, PCT filing date is the earliest filing date because the its U.S. application was published.
But in question 2, PCT filing date doesn’t count because its U.S. application was abandoned.
Both are AIA questions. In the first case, the US application claimed the benefit of the earlier filed Polish application which eventually publishes and issued as US patent, according to AIA 102d the earliest priority date is available as reference. Therefore A is the correct answer. In the second case, since the US application was abandoned, the US application will not publish and there will be no US patent. It is not a PCT and therefore, the Canadian application will become reference only as of its publication date. E is the answer.
Phil,
I thought the same thing when I read the question (that, B was the right answer). However, after careful revision of the question, I realized: (1) I was confusing effective filing date with effectively filed.(2) I was incorrectly determining which application’s date controls.
(2) Because the application being examined is Levitt’s, next thing I did was determine Levitt’s filing date. Because Levitt’s application was filed on or after 3/16/13, the application is AIA app subject to AIA provisions. Therefore, the examiner is subject to 102(d) when making a determination of what patents and published applications are/are not effective (effectively filed) as prior art TO THE CLAIMED INVENTION, i.e., claims (with an AIA effective filing date) in Levitt’s AIA application being examined.
A reading of 102(d)(2) indicates “[a]s of the filing…. date of earliest such application that describes the subject matter.” Because AIA takes into consideration international dates and the Polish application is the earliest application that describes the subject matter Feb 28, 2012 is earliest date the Wojociehowicz disclosure will be prior art to Levitt.
@Raj or any of the contributors, if there is anything incorrect please let me know. I will take the exam soon. email: marienmslaw@icloud.com.
marienmslaw@outlook.com (correct email)
Hi, I am looking for a 2017/2018/2019 PLI study guide.
I am willing to pay an above average price.
Please send me an email if you have one.
Thanks!
Send me a gmail nagarajan16209.
Is there anyone in the SF Bay Area looking to study together? I haven’t bought one of the prep courses yet and still considering which one to go with. It would be nice to collaborate with locals. Email me at s70newark AT gmail.
Hi! I’m looking for PLI study guide.
Please email me to the gmail account–> ggool1207
Thank you!
Hi, does anybody who has taken the exam before recall whether it is possible to cut text directly from the question and paste it into the find box?
Thanks!
No. It is not a good search engine. You should rely on your memory. Searching MPEP at the exam center is a futile exercise. In my case, I could not even see the index page of the chapters.
Hiya, does anybody know when USPTO release the 2014 to 2019 exam questions?
For those who took the exam recently, how many AIA and how many pre-AIA questions did you see? specifically 102(b).
Are 2003, 2002 exam questions outdated?
thanks
I don’t think they released any exams after 2003. There was one 102-b question from pre-AIA. AIA is heavily tested as well as post-grant proceedings. None in 101. It is not worth going over the court decisions-Mayo, Alice etc.
Thanks Raj. I have the PLI 2016 book, it’s great to understand the material but I want to see more questions on AIA. I just need a book with question and answer. Do you think PatBar, or Patent Education Series be a better source? They cost almost the same, Or any other suggestions are welcome too.
Hi all,
Looking for recent PLI materials from 2017 or 2018 if anyone is looking to sell.
I have mine up for sale. Inbox me at patabar66@gmail
Joan Blondel is an employee of the Department of Agriculture in the Topeka office. Her specialty is corn and she has an idea for a new technique for plowing which she wishes to patent. Her underling Helmut Schmidt, at her direction, used the technique during the 2018 plowing season and carefully compared results with similar fields this year and in other years. The results were ready on June 23, 2018 and were a stunning and surprising proof that the invention works. The results are published one year later on June 23, 2019. When she mentioned the invention to her father one night at dinner in September 2019, he suggested that she might get even better results if she plowed against the grain on slopes. There was not sufficient interest to test whether her father’s idea worked, but she decided to include it in the patent application which was filed in January 2020. Claim 14 specifically sets forth this concept.
The examiner rejects all of the claims citing a patent to Jimbo Plowboy which issued on August 2, 2011, and which was filed on July 5, 2010. Plowboy discloses but does not claim either Joan’s or her father’s invention. Which of the following is true:
A All of the claims are barred by the Plowboy patent under 102(a)(2).
B All of the claims are barred by the Plowboy patent under 102(e).
C All of the claims can be patented because they are entitled to a date of invention based on a reduction to practice prior to the filing date of Plowboy.
D Joan could remove the rejection on Plowboy by acquiring the patent so that her application and the patent would then be commonly owned.
E None of the above.
I would say A. 102(a)(2) The claims were described in a patent.
B is wrong as question not pre-AIA
C is wrong as date of invention was not prior to 2010.
D is wrong as they need to be commonly owned on the date of invention.
Can you elaborate why it is not 102(a)(1). The subject matter was disclosed but not claimed (nevertheless covered in prior art) in an earlier filed and granted application that was available before Joan filed her app.
P.S.: THE QUESTION WAS WRONG IN ITS LAST SENTENCE AND OPTION B. ON VERIFICATION, THE QUESTION WAS CORRECTED TO BE:
The end of the question should read:
The examiner rejects all of the claims citing a patent to Jimbo Plowboy which issued on August 2, 2019, and which was filed on July 5, 2018. Plowboy discloses but does not claim either Joan’s or her father’s invention. Which of the following is true:
Answer B should read:
B . All of the claims are barred by the Plowboy patent under 102(a)(1).
A.
102-a-1 is not a choice in the answers! Even if it is a rejection under 102-a-1, the inventor can file a 130-a affidavit of attribution if it is the inventors publication published one year or less before the date of the application: A declaration of attribution under rule 130(a) is used to invoke the exception under 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A): 102(b)(1)(A) exception:
A potential prior art 102(a)(1) disclosure made one year or less before the effective filing date of a claimed invention is not prior art to the claimed invention if it was an inventor-originated disclosure. But the prior art is several years old by the time the applicant files the patent application. The dates pretty much tell you that it is 102-a-2 even without going all the way to the priority date. You should choose from one of the answers given. A is the best answer. There is no 102(e) under AIA.
Hi guys,
I wanted to ask where I can get more practice exams/questions ASAP. I have the PLI 2018 binder, but that’s pretty much it; no access to the patware. My test date is March 5
Willing to buy or share cost with someone to use their online study prep. email me at ftizon410@gmail.com
Thanks
Hi all,
I passed the bar yesterday!
This site helped a lot and do review all the 2002 and 2003 questions. tons of AIA, Appeals, PCT and I got 3 questions on ethics.
I have my PLI available for sale! Its 2018 version. With all updated extra study materials. Inbox me for more info – patabar66@gmail.com
Congratulations! I’m booked for the end of March.
Were you able to look up many answers and was the MPEP really as bad as they say? Also, what type of AIA, was it mostly 102?
Thanks!
hi BE,
i did not have to look up MPEP much – went by what can be the best option in most cases if I didnt know the answer. saved the look ups for the last of the session in both. Most of my look ups ended up being in 2100.
AIA had a whole lot – and in all types of post AIA matters.
One more tip to all test takers – as they say just know the basics of all the small chapters very well – 100-400, 800-1100 especially. Know where to go to look up ethics questions – especially after the latest 2016 changes.
I had 3 ethics questions!
All the best to all!
@Studyhard
I also had 3-5 ethics questions when I took the exam in August ( I failed by a few points) which weren’t simple and I couldn’t find the fact pattern in CFR chapter 11. Is there another place to look for those?
I think in Notice 4 of the source material there is lots of ethics. Subpart D—USPTO Rules of Professional Conduct.
As far as I know, this should be available for us to look up on the exam.
Hi, just wanted to let everyone know I passed on Friday, first time! I studied really hard and did so many past questions. I felt extremely ready going in, however the first half of the exam might as well have been in a foreign language!I guessed pretty much every answer and I was convinced I’d failed! I think the 10 “beta questions” they sneak in must have been all in the first half. The second half was more straight forward. There were about 5 questions that were repeats from past exams and I had an hour at the end to check answers. I got quite a lot of derivation, PCT, and a few ethics. I’m honestly not sure how I passed, I’m interested to see how close I was!
On another note, if it’s helpful for anyone else, my application process was a bit complicated. I’m currently on an EAD while I wait for my green card so I will only get limited recognition until that comes through. I did my undergrad in the UK so I had to get my transcripts translated into US grades. I also have a US PhD so I sent that too.
I’m also currently 36 weeks pregnant so I requested extra time for bathroom breaks. They gave me 15 minutes for each half of the exam. This isn’t added to the end of the 3 hours, it just stops the clock for 15 minutes.
If anyone has any questions, feel free to ask. I’ll check back on this site now and again.
Good luck everyone!
Congratulations! I found a reason to get pregnant! to get more bathroom breaks 😀
Congratulations!
I have some questions. How did you convert your grades in US? Did you send your transcript to get it certified by some special agency like WES. Did you send you PhD certificate without any transcript?
I have this questions because I am Russian with green card and need to certify my University diploma and transcript get certified and normal academic hours get converted in US system. I am also concerned about the fact that I need to send original transcript. Russian universities provide only one transcript. Sorry for this details.
Did they retain your documents and never return them to you?
Can I email you with questions about the exam?
Hello All,
I’m glad to say that I’ve passed my second time around! With the help of this website no doubt. I also used omniprep, which was alright but you needed to put in the work to make it worth it. My few cents: It seems like an overwhelming amount of material at first but you just have to get familiar with the MPEP and the CFR. I found that studying the CFR especially was useful, then you needed to fill in with the MPEP when a deep dive or questions about patentability/examination procedure was needed.
Also, I think the most important thing is timing! Learn to go through all the questions quickly (2 hours) then use your remaining hour to look up the questions you don’t know. In the first 2 hours I only looked up if I knew exactly where the material was. I got about 5 verbatim questions from 00-03 tests, and some variants.
Good luck!
Any strategy for quick MPEP lookup? I know where the content is located, but struggling to get to the correct answer quick enough.
Anyone selling their PLI books or study materials, I could use some supps!
Hi, there
I am currently looking for PLI study materials with AIA, if anyone would like to sell please reach out to me at jw85rbdj@gmail.com
Thanks!
I am currently looking for PLI study materials with AIA as well, if anyone would like to sell please reach out to me at claudiayy94536@gmail.com, thanks!
First of all, many thanks to this blog owner who put so many valuable study material together. This is the BEST site I can find in terms of patent bar exam prep. My exam date is already scheduled on Aug 05 and I wish I could find this site earlier.
One little unsatisfied thing to me is this site is not as discussing many AIA materials and questions. Maybe I should throw some questions here while I am studying and hopefully more people can jump onto discussing AIA issues.
————————-
LMNo Gravatar March 19, 2011 at 4:20 am
Snapshot of 102
102(a) = anything BEFORE filing of US application
102(b) = ONE YEAR concept – before one year all that matters
102(c) = abandoned
102(d) = TWO applicaitons – Foreign and US
102(e) = patent / publication of another AFTER filing US application
102(f) f = fraud
102(g) = gone – invention by others before your invention in US
————————————-
LM made a nice snapshot for pre-AIA 102, I want to create a similar snapshot for the current 102 (January 2018 [R-08.2017])
102(a) = Novelty; Prior art
102(a)(1) = anything made public BEFORE filing on the earth, no country limit
102(a)(2) = anything already in the patent system
102(b) Exceptions of (a):
102(b)(1) = ONE YEAR concept for the same inventor (exception for a(1))
102(b)(1)(A) = disclosure made by self
102(b)(1)(B) = subject matter disclosed was from the same inventor
102(b)(2) = exception for a(2)
102(b)(1)(A) = subject matter disclosed by the same inventor (disclosed and filed by self)
102(b)(1)(B) = subject matter publicly disclosed before filing by the same inventor (file by others but was from the same source)
102(b)(1)(C) = disclosure from the same owner (not necessary the inventor himself)
102(c) common ownership: owned or assigned to the same
102(c)(1) = joint agreement ON or BEFORE the claimed (in case the agreement is after, not qualify for common ownership)
102(c)(2) =WITHIN the scope of the agreement
102(c)(3) = allow amended names in the agreement
102(d) effective dates as prior art:
102(d)(1) : effective filing date = actual filign date
102(d)(2) : effective filing date = priority date
While making this snapshot for AIA 102(b), I surprisingly discovered that the one year concept seems only applying to 102(b)(1), but not to 102(b)(2), does that mean if I filed a provisional patent application 18months ago and it got abandoned, now I am filing the same invention, does the previous provisional app still not qualify as a prior art ? I am a bit confused, can someone help to clarify this? Also, if there are any misunderstandings in the AIA 102 snapshot I made above, you are very welcome to point out and discuss. Thanks!
I think it does not count as prior art. Had the patent published before it was abandoned, it would be prior art. But since it’s a provisional, it wouldn’t publish.
I’m taking the exam soon too. Good luck!
I think it would count as prior art for the applicant for the following reason: If you as a patent agent or attorney knew that the provisional application was filed 18 months ago and abandoned it and you are refiling the same application, on behalf of the same inventor, you have to disclose the fact to the patent office. It would be unethical if you fail to disclose. However, if you failed to file non-provisional application due to “unintentional delay” (building collapsed, natural disaster etc) then you can file a petition to revive, which will cost lot of money if you file within 14 months of the provisional filing. For an unrelated inventor from a different organization, filed by a different patent agent or attorney, the provisional application is not prior art. Just my thought.
One edit to my earlier comment: If the abandoned provisional is incorporated by reference, it can be considered prior art.
First of all, KUDOS to Claudia for generating this updated 102.* map.
It may be instructive to borrow the concept of logic functions (e.g. AND, OR, NOR, NAND, XOR, etc.) in mapping out all these priorities/prior arts…
Secondly, on your prior art question above, I think it depends on the premise/condition that led to your abandoning the provisional application. What drove you to abandon it AND subsequently refilling the same invention…
Hi,
I passed my exam last month and am selling my PLI materials (2018 edition). The PLI course was crucial in passing the exam. The study materials have highlights and notes but the questions are clean. I am selling for $400 or best offer. Please email at. sa.krystal7 at gmail.com
I am selling the 2016 PLI binder and supplement. kacynfujii at gmail.com
Hi all,
I am looking for PLI’s study guide with AIA. If you wanna sell one, please contact me at jhsucho@outlook.com
Thanks!
Hi,
I am looking for PLI’s patent review study guide with AIA. Please contact me at mspaulajohnson at yahoo.com
Hi,
I am looking for PLI’s patent review study guide with AIA. Please contact me at mspaulajohnson at yahoo.com
I’m looking to purchase PLI’s patent review if anyone has a copy please contact me at siamhashan at gmail.com
Hi, does anyone recall whether there was content table for every chapter? I mean the Chapter number with the title of each chapter. Thank you.
It is set up where the first page tells you what is in that chapter. The drop down will show you the titles of the chapters.
Dear Fellow Patent Bar Exam Takes,
I am in need of the PLI’s patent exam study guide binder with AIA (either 2017 or 2018 Edition), if anyone would like to sell it to a fellow exam taker, please reach out to me at: myflexcope [at] gmail [dot] com
>>> $300 minimum offer pending on materials condition <<<
Thanks in advance!
Best,
Michael
Hi Michael,
I passed the exam of October 30. I have studied with PLI study guide of 2015 edition, though. The book is in excellent conditions without markings or highlights. My offer price is $260 including shipping by USPS. If you haveany interests, please email me. Good luck for the exam.
Regards,
Insup
Thanks Insup. Apologies for the PayPal incident.
I’ve registered for my exam… Going all the way!
Best,
Michael
Dear Fellow Patent Bar Exam Take(r)s,
Did anyone try this book titled “The Ultimate Patent Bar Study Guide: Pass the Patent Bar Exam with Ease”? It seems to be written by an Esq.:
https://www.amazon.com/Ultimate-Patent-Bar-Study-Guide/dp/1481146475
Thanks in advance for sharing your insights!
Best,
Michael
I used the following book as additional support, NOT as my main study material. I liked the questions in the back, especially inter pares review because that was on the patent bar.
https://www.amazon.com/Patent-Law-Essentials-Exam-Techniques/dp/0999719408/ref=sr_1_7?keywords=patent+bar+prep+book&qid=1573487943&s=books&sr=1-7
Thanks Bianca for the advice. I’ll check it out.
Best,
Michael
For those who took the exam more than once. Could you please email me with strategies that helped you pass the second time. Thanks
email: moquette9@aol.com
I am selling my 2019 edition PLI study material for $350. If anyone is interested, please send an email to david.frodsham.2014 at gmail.com. The study materials have highlights and notes on it.
Selling my 2018 materials for $450, not including shipping. I have PDFs of some Patware exams & all of the MPEP. The materials have little to no highlighting & few notes in the margins.
Email me at biancaafox@aol.com if interested.
Hello,
Looking for PLI study guide 2017 or later. Please email me at cmecolikamp@gmail.com if you have one to sell.
Thank you
Hello,
I am looking for PLI study guides 2016 or later please email me at mariogav@umich.edu if you have any available. Thanks!
Hi all, if anyone is selling PLI study guide 2017 or later please email me at jayashae@gmail.com. Thank you!
Hi, please email me at yyuan2976@gmail.com if you are selling your PLI study guide 2017 or later . Thank you!
Hello All, I have my PLI 2017 study guide for sale on Ebay https://www.ebay.com/itm/293462483938?ul_noapp=true
I know I have emailed some of you. I want to post it here since the price has been lowered.
Giving away my 2017 PLI study materials. My law firm paid for it, so you just have to pay shipping. Email me at hannah.peterslorenz@gmail.com.
Hannah, I have sent you an email
These have been claimed.
Hello, I’m interested in purchasing a 2017, 2018, or 2019 set of PLI materials. Please email me at vasudevan.abhiraman @ gmail.com if you are selling your set.
Thank you!
After four months of part time studying, I recently (Feb. 2020) took the exam and passed on my first try! FYI I had no pre-AIA 102/103 questions.
There’s already a lot of advice on this website on what to study (just do ctrl-F for “tips”) but for guidance on specifically HOW to study, I brain dumped some tips in an article here. It’s a lot of “what I had wish I had known” when starting to study. The article also has links to my flow charts, glossary of terms, and flash cards. Feel free to share!
http://www.pocketfuloflint.com/2020/02/21/practical-tips-for-passing-the-patent-bar-while-studying-part-time/
This document outlines how I passed the Patent Bar this spring:
https://medium.com/@electric.esquire/passing-the-patent-bar-in-2020-c697e4acdcdf
Hopefully it provides some utility. I wrote it as frankly as reasonably possible, without any economic incentives.
This is wonderful thank you so much!
SELLING 2018 PLI STUDY GUIDE
PLI Exam Focus Patent Office Exam Course
+
Pre-Course Materials & Keyword Glossary
After using this course, the lectures were nice but to be honest, the course book really helped hone in my focus, plus old questions, AND REVIEWING THE STATUTE (just the main pertinent chapters others have listed)
Email me @Alec10983@aol.com
This book has been sold. Good luck to all and stay safe
Selling my 2019 PLI materials. In great condition — no writing or highlighting. Email me at hydrargyrumate [at] gmail [dot] com. $800 or best offer.
Hi,
I am selling my PLI 2019 study guide. contact me via cak2020 at gmail
Hi I am looking to purchase a PLI study guide, please contact me at omahrouyan at gmail.
Hi,
I am looking for PLI studying material, especially the study guide binder.
If anyone wants to sell, please let me know via gudtjr1993 at gmail
Thank you
I’m also looking for 2019 PLI study material. Please email me at liplipsun at gmail. Thanks
Hi,
I am interested to buy PLI Material (specially videos). If you are interested would you please contact me at wahidaafza@gmail.com
Please discard this email. I cannot purchase video legally. I have my material from the PLI directly.
Looking for PLI Study material, specifically the study guide binder. If anyone is looking to sell send me an email at wilkitre@gmail.com. Thanks.
Hi all,
I am looking to sell the 2020 PLI Study Materials.
Email me to caa008@ucsd.edu if you’re interested.
Anyone selling or giving away unwanted material please email me at mariogjyli@usf.edu
Hi there! Is anyone selling/donating their PLI study guide from 2017 or later? I’m interested. Please email me at luannasaade@gmail.com
Thanks!!
Hello – I am also looking for a PLI study guide from 2017 or later. If selling please email me at mraaronsteinberg@gmail.com
Thank you!
Passed on my 1st Try Luckily
After the test ended, the preliminary results shows me passed. I feel lucky!
Preparation：
1.I used PLI Binder 2019 and prepared for almost 2 months with roughly 5 hours per day and especially focused testing on the questions in the last 3 weeks before the exam.
2. Went through roughly Binder only for one time!
3. I went through the three old exams and prime question both for two times. First time, I scores below 60%; However, my second scores went up to 70%+ with much remaining time to review！(but today the really test situation is a little bit time-tight！)
Testing on-site
Basics:
Heavy on 1400, 2100, 700; much on 600 (ADS,IDS); other on PCT and Post-grant Proceeding
Details (estimated, not remembered clearly):
• No pre-AIA questions
• 4-5 questions on assignment/power of attorney (a little bit more than expected)
• 10 AIA factual pattern(very long, wordy questions –almost makes me hardly concentrating)
• 4 PCT,PPH (less than expected)
• 8 Appeal (timing and the various responses from examiners and applicants)
• 7 IPR, PGR, Ex Parte Reexam, Protest, Reissue,Derivation (Reissue matters!) • 5 on Chapter 600 (mostly on IDS, ADS)
• 2-4 Design patents( one with protection term specified with different filing time)
Repeats:
5-6 repeats, all are exactly the same questions in those two old exams: 03 April and 03 October!
Other tips:
• I finished each section with about 60 minutes left in the first section and 30 minutes left in the second section (in the afternoon too much wordy Questions!).
• I hardly use the search MPEP. Personally I am not good at searching and reading quickly MPEP.
Wish you all lucky!
BTW, I am selling my PLI Binder. Please email me at benjamesrva@gmail.com
Hi all,
I’m planning on taking the exam between January and February of 2021. I’m looking for up to date PLI study guide materials anyone is willing to give or sell. Email me at coronaal@yahoo.com
Thanks!
Hi everyone –
I am planning to take the exam in January…If anyone is selling, I’m ideally looking for 2018, 2019, or 2020 version.
Can reach me at mraaronsteinberg@gmail.com
Thanks!
Hi all,
I’m looking for a PLI study guide binder if anyone is selling. Send me an email: adinathazan (at) gmail (dot) com.
Thanks!
Hi Everyone,
I just passed the patent exam on my second try. I started studying in May of this year. Maybe spent about 2-3 hours a day M-F. I went through all the PLI lectures (kind of a waste imo), then took every exam offered in patware. I took the exam in August and failed with a 56%. I took the review through prometric which was really helpful because many of the questions on the first go around were on my second exam. Although I wasn’t quite sure I remembered the right answer… Anyways, my second go around, I focused on all the patware questions (not self generated exams) and really studied all of those and the past exams and made sure I understood why each answer was right and why all the other options were wrong. Good luck to everyone preparing!
I am selling my 2019 binder. Please reach out if you’re interested. Thanks!
tknuds4(at)gmail(dot)com.
Hey Tyler,
I failed it in February and because of Covid, my second test was postponed. By the time Prometric opened up, I graduated law school and had to start studying for the bar. I regret not taking the time to review the test months later but had so much going on. Do you mind sharing like Ben did ^^ on some trends you saw. Any pre AIA? Much appreciated!
Hi Katie,
I thought the review was really helpful just because I noticed repeat questions although I wasn’t even sure what the right answer was… I saw a couple ethics questions about conflicts of interest, mostly AIA 102 questions, one question wanting to know about transitional applications and which law applies to what claims. Also a lot of assignment questions for some reason. Know who is the applicant after an assignment. Rights of the assignee. 103 questions were on there a bunch. To be expected. I did see a PPH question which just required knowing the elements of a successful application. knowing 102 was huge because those were easier questions. I was so lucky and had two multiple dependent claims questions which was an easy look up in 608.01(n). Feel free to shoot me an email if you have specific questions. I think having the PLI course and going through all of the questions and studying those to where you can answer them without lookups or really quick lookups (and understanding why they are right) and getting at least 90% on each go around is huge and helped me a lot. Sorry this is all over the place. Hope it helps!
PS I only saw a few repeat questions from the 02/03 exams. But I was soooo happy to see them.
Thank you so much for taking the time! I appreciate it.
Hi All,
I wish I had looked at this website earlier. I had my exam on oct 17 but did not pass , got a 67% score. So it really sucks coming so close. I have to say the exam was different than expected. I got 4 questions on provisional rejection! and they were kind of tricky. They were a few 102 questions that seemed easy but none the answers choices we right, so I was really confused because these should have been easy. And one of my PCT questions did not have the whole option E . The sentence was cut off mid way and I knew that would have been the right choice. Also, the nerves got me in the end and I changed few answers that I had marked , but now looking back my earlier selection was right and I would have passed if I had not changed those. I plan to take it again soon but I ma nervous because I will be almost 7 months pregnant by Dec and I just wanted to get this done.Anyways , sorry about the long rant !! and thanks for listening
Hi all. Just past the patent bar on my first try and I’m selling my 2020 PLI materials that I used to help me pass (binder, book) and I can include a set of 738 electronic flashcards. Email me: kle.uvf at gmail dot com if you are interested! Thanks
Are the flashcards helpful? and if so are they still available?
Thanks,
Linda
Are the flashcards helpful? and if so are they still available?
Thanks,
Linda
Hi guys,
Can anybody let me know what is special about PLI material and if it is possible to study and pass the bar without it? There are a bunch of presentations and training materials on USPTO website. Aren’t they enough to get you up to speed?
Thanks in advance for your inputs.
Andrew
PLI is very comprehensive. You will save a lot of time just taking the course. I tried to without it but I failed and I lost a lot fo time.
Other sources are all scattered here and there.
Hi everyone,
I’m looking for a PLI study guide if anyone is selling. Send me an email: aimee.l.fanter@gmail.com
Thanks!
what is the PLI patware software like? I got a material from amazon which included all material (binder, videos, glossary everything). The patware software in the instructions directs me to go to epracticesoftexams site. Is it the same as the patware or are they different. It would be helpful if anyone offers their insights
Hi Everyone!
I’m selling my PLI 2020 Binder along, Patent Education Series Volumes 1-3 practice questions supplements, and will throw in flashcards!
Please email me at mraaronsteinberg@gmail.com if interested.
Thanks!
Hi! I just passed on my first try using only 2020 PLI course materials. I’m now selling them here: http://ebay.us/hqIJwI?cmpnId=5338273189
They are in excellent condition with absolutely no markings. Best of luck in your studying!
Congrats. Do you remember any of the questions?
Hi all!
I recently passed the patent bar and looking to sell my 2019 PLI exam study guide that comes with an additional book of pre-course material and keyword glossary. I know it’s not the latest version, but the differences between the 2019 and 2020 are minimal. I don’t even remember seen anything from the “new” 2020 material in the patent bar exam. I’m asking for $400 (shipping included in price). Anyone interested email me at coronaal@yahoo.com
Thanks!
Hi! I’m selling my 2020 PLI Binder. Condition is like-new and there is vey little handwriting in it.
Please contact me at geauxtexas22@gmail.com if interested.
Thanks & Happy Studying!
Anyone studying for the patent bar? I plan on taking it in September and would love someone to study with. Email me at zsherwani3894@gmail.com
Hello, I recently passed and I am looking to sell 2x 2020 PLI patent exam binders. One version is like new and the other binder has a small tear in it from the first owner.
Thanks!
https://www.ebay.com/itm/393458332073
https://www.ebay.com/itm/393458338899
Hi all,
I have got 2017 and 2020 PLI patent bar exam binders. they are in very good condition. little to no marks on either. they come with all the papers and pre-course materials. 2020 has the latest Post-AIA materials and questions that 2017 doesn’t. Asking for $600 for 2020, and $400 for 2017.
I also have flashcards I bought on Amazon for $80. I can ship that for $40. mint condition.
I have other PLI questions and answers. email me at phildelprose@gmail.com and tell me which you want.
best of luck in your studies
Phil
Preparing to take the patent bar exam November/December 2021. Seeking study partner/accountability partner to meet w/1x per week to discuss questions, check in, etc. If interested, email me at ticora.davis@gmail.com.
Selling my PLI patent study guide materials
https://www.ebay.com/itm/363562186799
Or if you want more information you can contact me through email
Hi,
I am planning to take the exam in 2021. Is anyone here selling the PLI binder? Please let me know, you can reach me at sonali.khr20@gmail.com.
I am looking to buy the PLI binder from 2016 or newer. Please email me if you are looking to sell.
Thanks!
Lorie
I am looking to buy the PLI binder from 2016 or newer. Please email me if you are looking to sell laddy2727@gmail.com
Thanks!
Lorie
Hi,
I have a question about AIA 102. I don’t know where should I post..
If U.S application was filed before A’s filing date and it was published after A’s
filing date then is it a prior art? I mean A filed between US application filing date and publication date.
Hopefully someone can answer this.
Hi Yap,
Here’s my answer.
Under 102(a)(2), it is prior art, UNLESS AN EXCEPTION in 102(b) or 102(c) applies.
Unless the application was filed by someone who derived the subject matter from at least one of the inventors in A’s application(102(b)(2)(A)), if one of the inventors of A’s application publicly disclosed it prior to that application being filed(or if someone who publicly disclosed the inventions derived it from the inventor), if the applications’ respectively claimed inventions were owned by the same person(102(b)(2)(C), or if a joint-research agreement exception applies(102(c) and 102(d)), then it is prior art.
This is the kind of situation that could go to a derivation proceeding.
Hi all. I took my Patent Bar Exam this Summer 2021, and I am looking to sell my 2020 PLI materials. I purchased them brand new! The materials consist of the full PLI binder, and supplementary books. There is light-medium notes but not too much at all where you cannot add your own notes. Please reply if you are interested!
Hi Leslie,
Is the PLI material still available? Please let me know.
Thanks,
Shruti
I complete my Patent Bar Exam, and I am looking to sell my 2019 PLI materials which I purchased used in early 2021. The materials consist of the full PLI binder and some additional note sets I compiled. There is some notations in the margins from the prior owner, but the PLI binder text is clear and readable. Please reply if you are interested!
I complete my Patent Bar Exam, and I am looking to sell my 2019 PLI materials which I purchased used in early 2021. The materials consist of the full PLI binder with practice book. Please reply if you are interested!
Hi all, I am looking to buy 2020 PLI binder, please email me if you would like to sell yours.
Thanks
Jessie
email laca202.jb@gmail.com
Hi,
Preparing for the exam and studied PLI 2013, can someone tell me about any subject matters that is changed from 2013 and I need to study for my exam in 20 days?
Thank you!
Selling 2020 PLI patent office exam course w/ complete patent education series supplement. See email if interested.
Fixing typo…Selling 2020 PLI patent office exam course w/ complete patent education series supplement. Send an email to mraaronsteinberg@gmail.com if you’re interested.
Selling 2020 PLI patent office exam course w/ complete patent education series supplement: http://ebay.us/jv3O3Q?cmpnId=5338273189
What is a practitioner required to do upon termination by applicant?
do they need to return all file contents and any fees paid in advance?
Selling 2020 PLI patent office exam course w/ complete patent education series supplement. Send an email to chaowangchem@gmail.com if you’re interested.
Selling 2019 PLI patent office exam course: http://ebay.us/9JVpRt?cmpnId=5338273189
Hi All, I am looking for purchasing a used PLI course material. If anyone is selling PLI course material (binder), please send me an email with your offer at sabrinabuet11@gmail.com. Thank you.
I am selling my 2019 PLI study guide preferably in DMV area for $250.
Please reply to this message with your email if you are interested in.
Selling my PLI binder (brand new, unboxed): https://www.ebay.com/itm/185352010744
2021 version
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